Appeal No. 2003-1034 Page 3
Application No. 08/897,455
record. See In re Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed.
Cir. 2000).
While we believe that one of the references cited by the examiner, the
Djerassi reference, is relevant to the issue of the patentability of the claims, the
rejection ignores what appears to be a particularly pertinent teaching of that
reference. Thus, we will first focus on the rejection over Djerassi, and then
address the rejections over Page, Bowers and Oughton.
Claims 11, 12 and 14-17 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Djerassi. Due to its brevity, the rejection is set forth below:
Djerassi [ ] teach[es] a generic group of 17,21-diesters of 6α,
16α-dimethyl-4-pregen-17α,21-diol-3,20-diones. The reference
teaches acyl groups such as acetyl and phenylpropionyl, the
optional double bond in the 1-position and that the compounds
exhibit anti-inflammatory and glycogenic activity.
The instant claims differ from the reference by reciting
specific species not exemplified by the reference, i.e., compounds
wherein R(1) is phenyl which may be substituted as indicated by
the claimed invention. However, Djerassi teach[es] a variety of
specific acyl groups including phenylroprionyl attached to the 21
position. Therefore, it would have been obvious to one of ordinary
skill in the art at the time of the present application to select any of
the species of the genus taught by the reference, including those of
the instant claims, because he would have the reasonable
expectation that any species of the genus would have similar
properties, and, thus, the same use as the genus as a whole. The
motivation to make the claimed compounds is based on the desire
to make additional compounds useful as taught by the prior art.
Examiner’s Answer, pages 4-5 (citations omitted).
The examiner’s rejection appears to be predicated on the proposition that
the description of a genus renders each and every species that are members of
the genus obvious. Such a broad per se rule of obviousness, however, is not
correct interpretation of the case law. A broad disclosure of a genus does not
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