Appeal No. 1998-2588
Application No. 08/673,702
Cameron describes compounds, also depicted by a Formula I, said to be estrogen
agonists useful for treating syndromes and diseases caused by estrogen deficiency,
including cardiovascular disease and osteoporosis. Pages 3-18. Cameron’s Formula I
1
has 10 variable moieties, designated A, B, Z, X, Y, D, E, Z , G and R. There are several
options for each moiety, and many of the options have sub-options. By way of example,
moiety X, with thirteen possible options (and sub-options within many of the options),
occupies position 1 of the base ring structure of Formula I; the compound is classified as a
benzothiophene when X is sulfur, as a benzofuran when X is oxygen, as a
dihydronaphthalene when X is -CH -CH -, etc. Moiety D is a substituent of position 3 of the
2 2
base ring structure and has 10 options, again with multiple sub-options. Moieties E, Z1
and G are linked in series to moiety D, and again, each has multiple options and sub-
options.2
According to the examiner (Examiner’s Answer, pages 3 and 4):
[Cameron] teaches a generic group of compounds which embraces the
instantly claimed compounds. See formula (1) in page 3, the intermediate
compound of formula 6b-2 in page 42, wherein A, B, Z are -CH=, X is S, Y is
1
substituted phenyl, D is -CO-, E is phenyl, Z is -(CH ) W (CH ) -, G is -2 p 2 q
NR R or a cyclic amino group as shown in options (a) and (b) on page 6, W
7 8
is -C(=O)-, p is 0-3 and q is 0-3. These compounds are taught to be useful
as estrogen agonists for relief of the symptoms of menopause . . . The
claims differ from the reference by reciting a more limited subgenus than the
reference. However, it would have been obvious to one having ordinary skill
in the art . . . to select any of the species of the genus taught by the
reference, including those instantly claimed, because the skilled chemist
2The general structure of Cameron’s Formula I is shown in Appendix II,
accompanying this opinion.
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