Appeal No. 1997-3186
Application 08/362,529
would have led one of ordinary skill in this art away from using substituents in the 4-position of the
piperidinyl group of the “head” moiety that are similar to those in the same position in the Kennis ‘451 and
‘663 compounds as shown by Kennis ‘255, which suggestion this person would reasonably have found in
the combined teachings of the references, based on consideration of chemical structure and utility. In this
respect, we observe that the bicyclic pyrimidinone “tail” moiety basically contains two ring nitrogens in the
pyrimidinone ring, wherein the ring nitrogen in the 3-position of the pyrimidinone ring is common to both
rings of the bicyclic moiety; and that while the bicyclic pyrimidinone “tail” moiety of Kennis ‘255 contains
a third ring nitrogen attached to the 2-position of the pyrimidinone ring, the bicyclic pyrimidinone “tail”
moiety of Kennis ‘451 can also contain a third ring nitrogen when the bivalent radical “A” is “-C(R6)=N-
,” wherein this ring nitrogen is attached to the 3-position of the pyrimidinone ring (col. 1, lines 53 and 57).
Thus, in view of the similar nitrogen content between the compounds of the references, the basis for
appellants’ contention is not readily apparent from the record.13
The second issue presented by appellants is that the examiner is in error in finding “that the
newly discovered property (embodied in the reserpine tremor test) does not impart patentability to the
compounds unless comparative testing shows that either the prior art compounds do not exhibit activity
in the reserpine tremor test or that the subject compounds are unexpectedly superior” (brief, pages 4-
5). Appellants submit “that the teachings of the prior art would not have predicted the subject claimed
compounds performance in the reserpine tremor test” relying on the conclusion expressed by Dr. Meert
in his declaration “that results in the ATN test and the 48/80 test . . . cannot be used to predict results in
the reserpine tremor test” (brief, page 7). Thus, appellants contend that, in the absence of authority for
the examiner’s position, it is not necessary to make any further showing “because no prima facie case of
obviousness with respect to performance in the reserpine tremor test has been made out” (id., page 8).
We observe that appellants do not contend that the 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
13 Cf. In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991)
(“It is not the function of this court to examine the claims in greater detail than argued by appellant,
looking for nonobvious distinctions over the prior art.”).
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