Appeal 2007-1821
Application 11/040,964
advantages over the prior art; and 4) that evidence of unexpected results
establishes patentability of the claimed invention. We address each of these
arguments, in turn, below.
The compounds described by Cook and Appellants are referred to by
a variety of names in the various documents in this proceeding. For clarity,
we adopt Cook’s nomenclature. The claimed compound – 7α,11β-dimethyl-
17β-hydroxyestr-4-en-3-one 17-undecanoate – in Cook’s nomenclature is
7α,11β-dimethyl nortestosterone undecanoate. This compound has an n-
C10H21 alkyl group at its 17-position. Synonyms are: CDB-4521,
dimethandrolone undecanoate, and the 17-undecanoate ester.
The compound in Cook is 7α,11β-dimethyl nortestosterone enanthate.
This compound has an n-C6H13 alkyl group at its 17-position. Synonyms
are: the enanthate ester of 7α,11β-dimethyl nortestosterone, CDB-1422,
dimethandrolone heptanoate, and the 17-enanthate ester.
1. Claims 75-80, 85, and 86
No reasonable expectation of success that the claimed compound
would be orally active
Claim 75 is directed to an “oral dosage formulation.” Appellants
argue that there was no reasonable expectation of success that the claimed
compound would have activity when orally administered, and thus an oral
composition would not have been obvious to a person of ordinary skill in the
art (Br. 4).
We do not find this argument persuasive. First, Cook teaches that its
compounds can be administered orally (Cook, col. 19, 11. 49-50). We see
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