Appeal No. 2001-2138
Application No. 08/403,276
21. The examiner argues that the evidence of unexpected results
presented by Appellants is unpersuasive because they did not provide side-to-side
comparisons of the new enantiomer and the known enantiomer. Hence, according to the
examiner, Appellants have not shown that “the two isomers would have different properties
or that the claimed compounds have some unexpected or superior property.” (Id.)
Appellant’s argument
22. In response to the first office action on the merits of the application
rejecting claims 1–5 over RUSII, Appellants enclosed a copy of RUSI and stated:
“the compounds disclosed in the references have the normal
stereochemistry of the pregnane derivatives which is 8$ 9" 13$ 14" and in
contrast thereto, the compounds of Applicants’ invention have the unusual
antipodal configuration of 8" 9$ 13" 14$. This unnatural configuration of the
steroids of Applicants’ invention is obtained by a process in which the
starting compound is the antipodal (–)-estrone (8" 9$ 13" 14$), whereas,
the prior art compounds start with the natural (+)-estrone (8$ 9" 13$ 14") in
the reaction sequence. [Paper No. 7 at 2, emphasis original.]
23. Appellants argue that the references relied on by the Examiner do not
teach Appellants’ specific 8", 9$, 13", 14$ configuration of steroids. (Brief at 3.)
24. Appellants also argue that the references fail because they do not
enable those of ordinary skill in the art to make the claimed antipodal compounds. (Id. at
3–4.)
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