Appeal No. 1995-1303
Application 08/004,603
prior to the entry of the Answer, the examiner was under the burden of establishing why
it would have been obvious to focus on the C18 derivatives of Rajadhyaksha or
Minaskanian. The examiner does not provide any analysis in the Examiner’s Answer in
this regard.
Be that as it may, we disagree with the examiner’s conclusion that Francouer
would have suggested to one of ordinary skill in the art to focus on the oleic derivative of
Minaskanian or substitute an oleic chain for the corresponding saturated C18 alkyl group
in Rajadhyaksha. Francoeur is directed to pharmaceutical compositions for the topical
administration of lipophilic pharmaceutical agents. To this end, the pharmaceutical
agent is blended with a solvent system comprising certain 1-alkylazacycloheptan-2-
ones and specified cis-olefin compounds. The examiner has correctly determined that
oleic acid is the preferred cis-olefin compound of Francoeur. However, the examiner
has considered that disclosure of Francoeur in isolation rather than in light of the entire
disclosure.
Francoeur describes the combined use of 1-alkylazacycloheptan-2-ones wherein
the alkyl moiety has from 8 to 16 carbon atoms with oleic acid. We find that disclosure
to be significant as it supports the conclusion that at the time of the present invention
workers in this field viewed oleic acid as a stand-alone component in compositions
containing 1 -alkylazacycloheptan-2-ones, not as a basis to select or modify specific 1-
alkylazacycloheptan-2-ones. The examiner has not adequately explained why
Francoeur’s disclosure of using oleic acid as a stand-alone component of a composition
which also includes 1 -alkylazacycloheptan-2-ones wherein the alkyl moiety has from 8
to 16 carbon atoms aids would have suggested the claimed compound to the e xtent it is
described in Minaskanian. Considering the alternative rejection premised upon
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