Appeal No. 2007-1140
Application No. 10/753,729
9). These are conclusory statements without a description or explanation of
the test data upon which the conclusions are based. “[W]hen unexpected
results are used as evidence of nonobviousness, the results must be shown to
be unexpected compared with the closest prior art.” In re Baxter Travenol
Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991).
Appellants do not provide sufficient information to determine whether the
comparison of the claimed compounds was with the closest prior art
compounds of Cuthbertson. Moreover, the “unexpected results” must be
“commensurate in scope with the degree of protection sought by the claimed
subject matter.” In re Harris, 409 F.3d 1339, 1344, 74 USPQ2d 1951, 1955
(Fed. Cir. 2005). A showing that certain compounds within the scope of the
claim have unexpected properties does not necessarily establish that all
species within the scope of the claim possess the asserted unobvious
property. In sum, we do not find Appellants’ evidence sufficient to rebut the
prima facie case of obviousness.
Rejection of claim 1-11, 13-18, 20, and 22 over co-pending Application
10/269,575
An obvious-type double-patenting rejection over a co-pending
application is appropriate when the claims of the co-pending application are
not identical, “but at least one examined application claim is not patentably
distinct from the reference claim(s) because the examined application claim
is either anticipated by, or would have been obvious over, the reference
claim(s).” M.P.E.P. § 804. It is not clear from the Examiner’s rejection
what claims of co-pending U.S. Serial Application No. 10/269,575 were
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