Appeal No. 2003-0890 Page 6
Application No. 09/706,683
skilled in the art would use in order to determine the activity profile of a given
compound. Id., pages 18-19. Under these circumstances, it was the examiner's
responsibility to set forth a fact-based explanation as to why use of such an assay to
determine the activity profile of a given compound would require undue
experimentation. We do not have such an analysis.
The enablement rejection is reversed.
2. Obviousness.
The examiner relies upon Abou-Gharbia as describing compounds which bind
the 5-HT1A receptor. Abou-Gharbia, column 3, lines 5-8. The examiner states that
Abou-Gharbia describes at least two compounds which differ from those required by
claims 1-3 on appeal in the closest approximation by "lacking instant Y-R1 group."
Examiner's Answer, page 7. The examiner specifically points to two compounds
described at column 2, lines 22-26 of Abou-Gharbia, i.e.,
Id. In other words, in the closest approximation the two Abou-Gharbia compounds
identified by the examiner contain an ethyl bridging moiety while the compounds
required by claims 1-3 can have an ethyl bridging moiety substituted by aryl, e.g.,
phenyl (Y = -(CH2)m- with m = 0 and R1 = aryl).
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