Ex Parte Esser et al - Page 10


                Appeal 2006-3252                                                                                 
                Application 09/536,728                                                                           

                                                                    H                                            
                                           H          Br                                                         
                                                                    N                                            
                                     H                      N                                                    
                                                                     N                                           
                                           N          CH3            H                                           
           1                         H3C       CH3                                                               
           2                                                                                                     
           3                                       Formula 3                                                     
           4                                                                                                     
           5           A method for making the compound is described in Esser Example 2.                         
           6    Publication, ¶¶ 0106 through 0108.                                                               
           7           A comparison of the compound of Esser Example 2 with                                      
           8    phenylephrine for treatment of urinary incontinence is described in Table 1.                     
           9    Publication, ¶¶ 0137 through 0139.                                                               
          10                                                                                                     
          11                              Claims under consideration                                             
          12           Claims 26 and 73-81 are before us.                                                        
          13           We refer the reader to Appendix 1 for a copy of the claims, as well as                    
          14    non-involved claim 21 from which some claims before us depend.                                   
          15                                                                                                     
          16                                         Olson                                                       
          17           Olson, owned by Merck & Co., Inc., relates to "novel" compounds                           
          18    and a method of using the compounds to delay the onset of egg production                         
          19    in young pullets and interrupting the egg production of mature laying hens                       
          20    by administration of one or more of the compounds—usually in a feed mix.                         
          21    Col. 1:6-21.                                                                                     

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