Appeal No. 1997-3186
Application 08/362,529
blooded animals, as set forth in appealed claims 30 and 33, would not have been predicted from the
combined teachings of the applied references; and that the examiner has allowed claim 31 drawn to
methods of antagonizing the action of reserpine in warm blooded animals.14
We cannot agree with appellants’ position. Either of the evidentiary showings suggested to
appellants by the examiner would serve appellants’ case for nonobviousness. See generally, Dillon,
supra (Rebuttal of a prima facie case of obviousness by an applicant “can consist of a comparison of
test data showing that the claimed compositions possess unexpectedly improved properties or
properties that the prior art does not have [citations omitted] . . . .”). However, appellants’ mere
reliance on their discovery of a new property not suggested by the combined teachings of the prior art
does not amount to a showing of an actual difference in properties that would rebut the expectation of
similar properties between the claimed compounds and the compounds of the references based on the
common properties reasonably expected to be shared by these compounds from the combined
teachings of the references. In re Hoch, 428 F.2d 1341, 1343-44, 166 USPQ 406, 409 (CCPA
1970) (no evidence was introduced into the record); cf. In re Wilder, 563 F.2d 457, 460-61, 195
USPQ 426, 429-30 (CCPA 1977) (evidence of record established an actual difference between
claimed compound and one of two structurally similar prior art compounds for a property disclosed for
the claimed compound, but did not establish an actual difference in properties between the claimed
compound and the other prior art compound based on this property or a property taught for the prior
art compound); In re Mod, 408 F.2d 1055, 161 USPQ 281, 283 (CCPA 1969) (evidence of record
14 The examiner has also allowed claim 32 drawn to methods of antagonizing the action of dopamine in
warm blooded animals. The examiner did not set forth in the record any reason why claim 32 was
allowed in the Office action of May 16, 1996 (Paper No. 10; page 4), which was not the case for claim
31 (“The Examiner concedes that such a new use is not suggested – as indicated by the allowance of
the claim to antagonizing the action of reserpine (claim 31).”). We observe that Kennis ‘255 discloses
that the compounds containing substituents falling within the formulae “(a-1),” “(a-2),” and “(a-3)” in the
4-position of the piperidinyl group show antagonism against dopamine (page 14, lines 11-12 and 16-
17). Accordingly, we suggest that the examiner reconsider the allowance of claim 32 in light of the
combined teachings of the references applied to the appealed claims, and if on reconsideration the
current status of this claim is maintained, provide reasons for allowance thereof on the record.
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