Appeal No. 1997-2204
Application No. 08/440,989
where R1 is (C1-C5) alkyl, C3-C6(cycloalkyl)alkyl, C5-C7(cycloalkenyl)alkyl, (C6-C10)aryl, (C6-
C10)aryl(C1-C5)alkyl, trans(C4-C5)alkenyl, allyl or furan-2-ylalkyl; R2 is H, OH or O2C(C1-
C5)alkyl; R3 is H, (C1-C5) alkyl, or ((C1-C5)alkyl)C=O; and R4 and R5 are individually H, F, Cl,
Br, NH2, NO2, (C1-C5) alkyl or (C1-C5) alkoxy or R4 and R5 together are benzo or
dioxymethylene (specification, page 4). According to appellant, "[i]t is believed that
compounds of [this] formula … can decrease ethanol consumption by mammals without
decreasing the intake of food or water for prolonged periods of time" (specification, page
5).
DISCUSSION
I. Rejection under 35 U.S.C. § 102(a)
Claim 21 stands rejected under 35 U.S.C. § 102(a) as anticipated by Portoghese et
al. Specifically, the examiner refers to 7-benzylidene-7-dehydronaltrexone, which is
illustrated in Scheme II of the reference at page 1293 (compound 7) and described further
in the experimental section at page 1296, column 2, last paragraph. The examiner also
refers to the disclosed biological activity of compound 7 in Portoghese et al., page 1295,
column 2, second complete paragraph (Examiner’s Answer, page 10). Appellant does not
dispute that 7-benzylidene-7-dehydronaltrexone is a species within the genus of
compounds recited in claim 21; or that claim 21 "reads on" a method described by
Portoghese et al.; or that Portoghese et al. constitutes an anticipatory reference if it
constitutes legally available prior art. The only dispute is whether Portoghese et al.
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