Appeal 2007-1821
Application 11/040,964
1285 (Fed. Cir. 1991). Therefore, we must first address whether Cook’s
compound represents the closest prior art.
The Examiner contends that the closest prior art is the lower adjacent
homolog of the claimed compound, i.e., the 17-decanoate ester, where the
alkyl group is n-C9H19, as listed in Cook’s claim 2 (Cook, col. 22).
Appellants contend that the closest prior art is the 17-enanthate ester
of 7α,11β-dimethyl-19-nortestosterone (where the alkyl group is n-C6H13)
because it represents the closest exemplified embodiment described in Cook
(Reply Br. 5-6). They argue that the 17-decanoate ester is not specifically
exemplified in Cook, but only arrived at after choosing from a menu of
choices available in claim 2, including the choice of R4 to be n-C9H19 from a
list of seven different alkyl groups (Reply Br. 6).
In our opinion, Appellants were justified in choosing 7α,11β-
dimethyl-19-nortestosterone enanthate as the closest prior art. Appellants
are not required to compare the claimed invention with subject matter that
does not exist in the prior art. In re Geiger, 815 F.2d 686, 690, 2 USPQ2d
1276, 1279 (Fed. Cir. 1987) (Newman, J., concurring). See also Ex parte
Westphal, 223 USPQ 630 (BPAI 1983). In this case, the closest exemplified
compound in Cook is the 7α,11β-dimethyl-19-nortestosterone enanthate.
Having determined that Appellants have compared their compound to
the closest prior art, we turn to the question of whether Appellants’ evidence
is sufficient to establish unexpected results. Because the Examiner erred in
not considering Appellants’ evidence, we designate this as a new ground of
rejection under 37 C.F.R. § 41.50(b).
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