Appeal No. 2001-1290 Page 4
Application No. 08/950,032
(Fed. Cir. 1988). The examiner found, inter alia, that the prior art contained little
data on non-steroidal agonists or antagonists for steroid hormone receptors; that
steroid hormone receptors binding involves a high degree of unpredictability; and
that the formulae recited in the claims encompass numerous structurally different
classes of compounds. See the Examiner’s Answer, pages 3-5.
On the other hand, the examiner acknowledged that the level of skill in the
art is high; that the specification discloses preparation of over 300 compounds,
along with in vitro and in vivo assay procedures; and that the claims were
enabled as to “using the selective agonist/antagonist compounds and their
structurally related compounds for PR, AR, ER, GR, MR for modulating their
respective receptor.” Examiner’s Answer, pages 4-5.1 On balance, however, the
examiner concluded that the claims were nonenabled. See the Examiner’s
Answer, page 5: “Since insufficient teaching and guidance have been provided
in the specification . . . , one of ordinary skill in the art, even with high level of
skill, would not be able to use all the structurally diverse compounds for treating a
patient requiring steroid receptor therapy and for treating all the different disease
conditions as claimed without undue experimentation.”
Appellants argue that the assays disclosed in the specification would
enable those skilled in the art to routinely determine the receptor modulator
activity of the compounds recited in the claims. See the Appeal Brief, page 4.
“While the process of synthesizing compounds within the scope of the generic
1 The precise meaning of the quoted phrase is unclear. Presumably, the examiner is referring to
the exemplary compounds that were actually tested and shown to have activity in in vitro and/or
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