Appeal No. 2001-1221 Page 2
Application No. 08/442,957
According to the examiner (Answer, page 4)
Teutsch [teaches] a genus of 19-nor steroid compounds having a keto
group in the 3-position and double bonds in the 4 and 9 positions and a
substituted phenyl group at the 11-position (cols. 1-6). The 11-phenyl
group of the compounds are substituted with an alkynyl group of 2 to 8
carbon atoms which may be substituted with a hydroxy group (col. 1, lines
43-47). The 17-position substituents include those of the claims (col. 2).
The compounds are taught to have antiprogestomimetic and
antiglucocorticoid activities.
Similarly (id., page 5)
Loozen teaches a genus of 19-nor steroid compounds having a keto
group in the 3-position and double bonds in the 4 and 9 positions. The
compounds have a homocyclic or heterocyclic aryl group in the 11-
position substituted with a hydrocarbon group of 1-10 carbon atoms which
is substituted with oxo and/or hydroxyl groups (col. 1 to col. 2, line 9). The
compounds are taught to have antiprogestinic activity (Col. 1, lines 27-29).
Further according to the examiner (id., pages 4, 5, and 6), each of the claims
differs from the prior art
by reciting a more limited genus than the reference having an organic
radical, which may be arylene, attached to the 11-position through a
carbon atom which terminates in a CH2OH group. However, it would have
been obvious to one having ordinary skill in the art at the time of the
invention to select any of the species of the genus taught by the
reference, including those of the claims having the hydroxy group
attached to the terminal carbon of the 11-position substituent, because an
ordinary artisan would have the reasonable expectation that any of the
species of the genus would have similar properties and, thus, the same
use as the genus as a whole.
There would appear to be no dispute that the claimed species and subgenus are
encompassed by the generic 19-nor steroid formulas described in Teutsch and Loozen.
Nevertheless, without conceding that the claimed compounds would have been prima
facie obvious over the prior art, appellants argue that the references Adescribe final
products which have a particular pharmacological activity which is completely non-
analogous to Applicants= pharmacological activity,@ thus, Athe decision of [In re
Magerlein, 602 F.2d 366, 202 USPQ 473 (CCPA 1979)] is pertinent to the present
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007