Appeal 2007-1033
Application 10/091,061
are drawn to treating cancer, which is construed as both inhibition and
regression of cancer” (id.).
We do not agree with the Examiner that the Declaration fails to
overcome the prima facie case. First, “commensurate in scope” means that
the evidence provides a reasonable basis for concluding that the untested
embodiments encompassed by the claims would behave similarly to the
tested embodiment(s). See In re Lindner, 457 F.2d 506, 508, 173 USPQ
356, 358 (CCPA 1972) (“Here, only one mixture of ingredients was tested.
. . . The claims, however, are much broader in scope, . . . and we have to
agree with the Patent Office that there is no ‘adequate basis for reasonably
concluding that the great number and variety of compositions included by
the claims would behave in the same manner as the [single] tested
composition.’”) (bracketed material in original).
In this case, the Examiner has not provided any reason why, in view
of the Declaration, a synergistic effect would not also be expected for other
cancers and at different dosages. In this regard, we note that Vite generally
teaches that compounds of formula V, which encompasses Compound 1, are
“useful in the treatment of a variety of cancers,” including carcinoma of the
breast, colon, lung, ovary, and pancreas (Vite 8). In addition, we agree with
Appellant that results demonstrating delay in tumor growth (as opposed to
regression of cancer) are sufficient to demonstrate an effective cancer
treatment (Reply Br. 8).
Thus, we conclude that the Declaration provides sufficient evidence of
an unexpectedly superior result to overcome the Examiner’s prima facie case
of obviousness.
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