Appeal No. 1999-1472 Page 5
Application No. 08/591,767
where R is:
and R1 and R2 are lower alkyl. It can be seen that the claims circumscribe a relatively
narrow subgenus of compounds, where variables R1 and R2 are lower alkyl groups.
Claims 1, 2, and 3 recite the testosterone analogs per se. Claims 4, 5, and 6 define an
intranasal pharmaceutical composition comprising applicant's testosterone analog and a
pharmaceutically acceptable carrier therefore. Finally, claims 7 through 15 recite a
method for increasing plasma testosterone levels comprising intranasally administering
to a mammal in need of such treatment an effective amount of the testosterone analog.
In setting forth the rejection of claims 1 through 15 under 35 U.S.C. § 103(a), the
examiner refers to a genus/subgenus relationship between compounds disclosed by
Hale and the testosterone analogs recited in the claims on appeal. The premise of the
rejection is that (1) applicant's claims recite "a more limited genus" of testosterone
analogs than the genus disclosed by Hale, and (2) it would have been obvious to a
person having ordinary skill in the art "to make any of the compositions as taught by
[Hale], including those of the instant claims" (Examiner's Answer, page 4, first full
paragraph, emphasis added). We disagree with this line of reasoning.
The examiner appears to invoke a per se rule of obviousness, holding the
claimed subject matter obvious because Hale discloses a class of testosterone
prodrugs embracing the "more limited genus" of compounds recited in the appealed
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