5. A more complete understanding of the heterocyclic
compound can be had by reference to Formula I on page 12 of the
specification, where for example, when X is oxygen [O] and Z is
)CH2), the "XZR1" moiety would be a ketone attached to a carbon
atom between the nitrogen [N] and B atom on the heterocyclic
ring.
6. The pharmaceutical compositions are said to
be useful "for treating alopecia and promoting hair growth"
(specification, page 1, lines 13-14).
7. The examiner finally rejected the claims on appeal
as being unpatentable under 35 U.S.C. § 103 over PCT application
WO 97/31898.4
8. The examiner also finally rejected the claims on
appeal was being unpatentable under 35 U.S.C. § 103 over
Hamilton, U.S. Patent 5,786,378. 5
9. The examiner found that the PCT application
"discloses compounds of the instant composition and that they
4 The PCT application was published on 4 September 1997. Accordingly, at
least for the purpose of this appeal, the PCT application is prior art under
35 U.S.C. § 102(a) assuming for the purposes of this appeal that applicants are
entitled under 35 U.S.C. § 120 to the benefit of their parent application. In
the Appeal Brief, applicants do not contest the prior art status of the PCT
application.
5 The patent issued 28 July 1998 based on an application filed
25 September 1996. The patent names Gregory S. Hamilton and Jia-He Li
as inventors. Accordingly, the patent is to "another" vis-a-vis the applicants
named in the application on appeal. Hamilton is therefore facially prior art
under 35 U.S.C. § 102(e). In the Appeal Brief, applicants do not contest the
prior art status of the Hamilton patent. Moreover, we note that applicants
have not sought to invoke the provisions of 35 U.S.C. § 103(c). It may be that
the application which matured into the Hamilton patent and the application on
appeal were not originally owned by the same entity. In this respect, we note
that the Hamilton patent identifies its assignee as being GPI Nil Holdings,
Inc.; the address to which communications in the application on appeal have
been addressed identifies Guilford Pharmaceuticals. We express no views on
whether facts exist for invoking 35 U.S.C. § 103(c) in this case.
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