Appeal No. 1997-1955
Application No. 08/423,498
resulting in a wide range of symptoms. There are various approaches to treating
endometriosis, including administration of estrogens, progestins or weak androgens, but,
according to the specification, “treatment by hormonal therapy is diverse, poorly defined,
and marked by numerous unwanted . . . side effects.” Page 5.
DISCUSSION
Claims 46 through 51 on appeal are directed to a method of inhibiting
endometriosis by administering an effective amount of a benzothiophene of formula I (see
the Appendix accompanying appellants’ Brief). Claim 36 of co-pending application serial
no. 08/438,334 is also directed to a method of inhibiting endometriosis, but the base ring
structure of the compound administered is a benzofuran, rather than a benzothiophene. A
comparison of the formulas of the compounds administered in the methods of the present
and co-pending applications shows that the only difference between them is in the base
ring structure: position 1 of the benzothiophenes is sulfur, while position 1 of the
benzofurans is oxygen.
In the Examiner’s Answer, the examiner refers to paper nos. 5 and 7 for the
statement of the rejection, although the rejection appears only in paper no. 5. In view of its
brevity, we reproduce the rejection in its entirety:
The instant application claims the use of a benzothienyl compound for
treating endometriosis while SN 08/438,334 claims the same method using
a prima facie obvious compound i.e. a benzofuranyl compound as
recognized in the prior art as equivalence of the instant claim (see Crenshaw
and Erber). One having ordinary skill in the art would recognized all the
3
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007