Appeal 2007-1821
Application 11/040,964
nortestosterone enanthate has activity over a ten-week period. Exhibit A of
the Blye 2 Declaration also shows 7α,11β-dimethyl-19-nortestosterone
enanthate having activity over this same length of time. Dr. Blye does not
define the characteristics of what is considered to be long-acting. But
Cook’s Table 2 (Cook, cols. 19-20) describes the results as “Long Term
Androgenic Activity.” Thus, Appellants did not solve the need for a long-
acting compound because such a compound – 7α,11β-dimethyl-19-
nortestosterone enanthate – already existed in the prior art.
Appellants also contend that a long-felt need for an oral androgen was
stated to have been appreciated in the prior art. Our difficulty with this
argument is that Dr. Blye admits in his declaration that orally active
androgens were known in the prior art (Blye 1 Declaration 4: ¶ 11.) Thus,
we do not find sufficient evidence to establish a long-felt need for an oral
androgen.
The claimed compound has advantages over the prior art
Appellants also argue that the claimed compound has advantages over
prior art compounds (Br. 5-7). They assert that prior art compounds have
been linked to liver toxicity, but that the claimed compound lacks such
toxicity (Br. 6-7).
To rebut prima facie obviousness, the evidence must be of an
unexpected difference in properties as compared to the prior art, not merely
a showing of an advantage. See In re Hoch, 428 F.2d 1341, 1343, 166
USPQ 406, 409 (CCPA 1970). In this case, Appellants assert that an
advantage of the claimed compound is that it lacks “an alkyl group at the 17-
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