Appeal No. 2003-1034 Page 6
Application No. 08/897,455
compounds have a 21-ester substituent and that Page teaches that when R5 is
RCOO, R is one of three groups, an alkyl group, an aralkyl group or a phenyl
group. However, as Page exemplifies only sixteen esters, and as none of the
thirty-three compounds exemplified by Page has a phenyl substituent in the 21
position, the reference does not direct one of ordinary skill in the art to the use of
the aralkyl group.
Finally, with respect to the rejection over Bowers and the rejection over
Oughton, the examiner again concludes:
[I]t would have been obvious to one having 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 of the 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 5-6. Thus, the rejection over Bowers and the
rejection over Oughton are vacated for the same reasons as set forth above.
FUTURE PROCEEDINGS
Upon remand, the examiner should address the patentability of the claims
in accordance with this opinion. The patentability of the pending claims should
be addressed in view of the Djerassi reference, as discussed above, and any
other reference that the examiner may feel is relevant to the patentability of the
claim. If a rejection is made under 35 U.S.C. § 103, we suggest the examiner
adhere to the model set forth in The Manual of Patent Examining Procedure
(MPEP) § 706.02(j). Use of that model will ensure that the examiner perform the
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