Appeal No. 1997-1955
Application No. 08/423,498
present application and the benzofurans of the co-pending application would have been
“recognized in the prior art as equivalen[t]” in treating endometriosis.
Crenshaw II, one of the references cited by the examiner, describes synthesis and
testing of potential antifertility agents, including a 2,3-diarylbenzothiophene (designated
“3m”) and a 2,3-diarylbenzofuran (designated “8b”) differing only in the substitution of
oxygen for sulfur in the base ring structure. According to the reference, the
diarylbenzothiophene (3m) was found to be a potent antiestrogen in rats, but the
counterpart diarylbenzofuran (8b) did not exhibit antiestrogenic activity in rats. Inasmuch
as Crenshaw II reports that the two compounds behave very differently in terms of their
hormone-like activity, we cannot agree with the examiner that one skilled in the art would
have found it obvious to use benzofurans and benzothiophenes interchangeably to treat
endometriosis.
In our judgment, the examiner has not established a prima facie case of
obviousness; accordingly, the provisional rejection of claims 46 through 51 under the
judicially-created doctrine of obviousness-type double patenting is reversed.
REVERSED
)
William F. Smith )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Fred E. McKelvey )
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