Appeal 2007-1821
Application 11/040,964
the Examiner erred in not finding the same reason in the prior art which
motivated Appellants to have made their invention. This is not required to
establish obviousness.
Unexpected results
Appellants contend that the claimed compound has “unexpected and
superior properties” compared to Cook’s 7α,11β-dimethyl nortestosterone
enanthate (Br. 9). The Blye 2 Declaration describes an experiment in which
the claimed compound (“CDB-4521”) and Cook’s compound (“CDB-1422”)
were tested for androgenic activity as a function of time (Blye 2 Declaration
2: ¶ 6). The claimed compound was administered subcutaneously as
crystalline needles in an aqueous suspending vehicle (Blye 2 Declaration 2:
¶ 6; Exhibit A). Cook’s compound was provided in oil and administered in
sesame oil (Blye 2 Declaration 2: ¶ 5; Exhibit A).
Exhibit A is a graph showing the effect of each compound on rat
ventral prostate weight. The area under the curve (AUC) is a measure of
activity. After the first week, the ventral prostate weight gain and AUC
were greater for the claimed compound than for the Cook’s compound. Dr.
Blye concludes that “[t]he foregoing shows that . . . [the claimed compound]
has superior properties compared to the . . . [compound] of Cook” (Blye 2
Declaration 2: ¶ 6).
“[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,
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