Appeal 2007-1821
Application 11/040,964
48 - col. 21, line 6; claims 1 and 2). The reference exemplifies
R4 groups such as n-C6H13 and n-C9H19 (see especially col. 22,
claim 2). The reference teaches (a) administration of from about
5% to about 120% of a conventional dosage of a conventional
drug and (b) various formulation[s] such as for oral, dermal or
nasal administration (see col. 19 line 49 - col. 20, line 65).
(Answer 3-4.)
In making an obviousness determination, it is necessary to identify the
differences between the claimed invention and the prior art. In this case,
Cook teaches 7α,11β-dimethyl nortestosterone enanthate (Cook, col. 17, ll.
34-36) which has an n-C6H13 alkyl group at its 17-position. The claimed
invention has the same structure, but differs in having an n-C10H21 alkyl
group at its 17-position (Specification, Fig. 12 showing (CH2)9CH3). The
Examiner contends
. . . because (a) of the close structural similarity of the
exemplified reference compound (see col. 22, claim 2) and the
claimed compound and (b) the teaching by the reference that R4
can be a Cl-18 alkyl (see col. 21, claim 1), the claimed
compound would have been obvious to the skilled artisan in the
art at the time of the present invention. The motivation to make
the claimed compound would be based on the desire to make
additional androgenic compounds having enhanced activity as
taught by Cook.
(Answer 4.)
DISCUSSION
Appellants do not dispute in this appeal the Examiner’s finding that
the claimed compound would have been prima facie obvious from Cook’s
teachings. Instead, they challenge the rejection on the grounds: 1) that the
claimed oral formulation would not have been obvious; 2) that Appellants’
invention satisfies a long-felt need; 3) that the claimed invention possesses
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