Appeal No. 1997-3186
Application 08/362,529
this appeal. Claim 1 is illustrative of the claims on appeal, a copy of which taken from the appendix to
appellants’ brief is appended to this decision.
The appealed claims as represented by claim 13 are drawn to a compound having a structural
formula as defined in the claim. Appealed claims 30 and 33 are respectively drawn to methods of
inhibiting neuronal serotonin reuptake in warm blooded animals and of inhibiting the affinity of serotonin
to 5HT1A receptors in warm blooded animals, wherein a therapeutically effective amount of a claimed
compound is administered to the warm blooded animals. The examiner has allowed claims 31 and 32
which are respectively drawn to methods of antagonizing the action of reserpine in warm blooded
animals and of antagonizing the action of dopamine in warm blooded animals, wherein a therapeutically
effective amount of a claimed compound is administered to the warm blooded animals.
The references relied on by the examiner are:
Kennis et al. (Kennis ‘451) 4,443,451 Apr. 17, 1984
Kennis et al. (Kennis ‘663) 4,804,663 Feb. 14, 1989
Kennis et al. (Kennis ‘255)4 0 378 255 Jul. 7, 1990
(published Eur. Pat. Application)
The examiner has rejected appealed claims 1, 2, 6, 11 through 25, 30 and 33 under 35
U.S.C. § 103 as being unpatentable over Kennis ‘451 and Kennis ‘663, both independently in view of
Kennis ‘255. We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants, we refer
to the examiner’s answer5 and to appellants’ brief for a complete exposition thereof.
3 Appellants state in their brief (page 4) that the appealed claims “stand or fall together.” Thus, we
decide this appeal based on appealed claim 1. 37 CFR § 1.192(c)(7) (1995).
4 Appellants observe that “the U.S. equivalent of [Kennis ‘255] is U.S. Patent No. 5,140,029” (‘029
patent) (brief, page 4).
5 The examiner refers to the Office action of June 27, 1995 (Paper No. 5; pages 4-5) for the statement
of the ground of rejection (answer, page 4), and to the Office action of May 16, 1996 (Paper No. 10;
pages 2-4) for his response to the arguments presented by appellants at pages 4-8 of the brief (answer,
page 4). The referral to more than one prior Office action in an examiner’s answer is inappropriate, but
in this instance, because the issues are straightforward and developed, we will not remand this
application for consolidation. See Manual of Patent Examining Procedure § 1208 (6th ed., Rev. 2, July
1996, 1200-14; 7th ed., Rev. 1, Feb. 2000, 1200-14).
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