Appeal 2006-3252
Application 09/536,728
1 Esser claims 74-75 and 77-79 also require a substituted amino group
2 at the 3-position. Accordingly, they fall with independent Esser claim 73.
3 Independent Esser claim 81, directed to a pharmaceutical
4 composition, has the same relevant limitations as Esser claim 73.
5 Accordingly, it too falls with claim 73.
6 The decision of the Examiner rejecting Esser claims 73-75, 77-79 and
7 81 as being unpatentable under 35 U.S.C. § 103(a) over Stähle is reversed.
8
9 Examiner’s § 103 rejection based on Olson
10 We begin our analysis of the patentability of subject matter of Esser
11 claims 26 and 73-81 by acknowledging that a prior panel held that subject
12 matter to be non-obvious over Olson. The prior panel's decision reversing
13 the Examiner's rejection based on Olson has not become final. Likewise, the
14 prior panel entered its decision prior to KSR. We are obliged to follow KSR.
15 Under the circumstances, we believe that it is appropriate to sua sponte
16 revisit the Examiner's rejection under § 103 of the claims before us based on
17 Olson. We now affirm that rejection.
18 Prima facie obviousness
19 The difference between Esser claim 26 (to a specific compound—see
20 Formula 2) and the compound of Example 14 of Olson is that Olson does
21 not explicitly describe a compound with a dimethylamino group
22 [―N(CH3)2] at the 3-position on the phenyl ring.
23 However, Olson describes a fully analogous compound having a
24 diethylamino group [―N(CH2CH3)2] at the 3-position, and like the
25 compound of Esser claim 26, a methyl on the 2-position of the phenyl ring.
22
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