Appeal No. 2003-1034 Page 4
Application No. 08/897,455
render any species that falls within it obvious. See In re Jones, 958 F.2d 347,
350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992); In re Baird, 16 F.3d 380, 382-83,
29 USPQ2d 1550, 1552 (Fed. Cir. 1994). There need be some teaching or
suggestion to lead the ordinary artisan to select the claimed compound. See
Baird, 16 F.3d at 382, 29 USPQ2d at 1552. The disclosure of
phenylproprionates in a long laundry list of acceptable substituents does not, in
and of itself, lead one to the claimed compounds.
As noted by the examiner in the response to arguments, however,
Djerassi specifically exemplifies a compound having a phenyl group at the 21
position, the 17,21-dienzoates in Example XII. See Examiner’s Answer, page 7.
Thus the issue becomes does the exemplification of the benzoate at the 21
position, along with the disclosure of the phenylproprionate as one of the
possible substituents at the 21 position, fairly suggest the claimed compounds.
We find that the issue was not fairly before appellants, as citing to that specific
example of Djerassi in the response to arguments in the Examiner’s Answer can
not be interpreted as being part of the rejection on appeal. See, e.g., In re
Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986) (noting that
the court would not condone the presentation of new grounds of rejection for the
first time on appeal).
The examiner has thus failed to address relevant teachings of the Djerassi
reference in the context of the rejection, and thus the fact finding is incomplete
and the issue is not susceptible to meaningful review. Because the rejection
failed to rely on those teachings of the Djerassi reference, we vacate the
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