Appeal 2007-1821
Application 11/040,964
period in the same type of assay described in the Blye 2 Declaration, and
using the same dosage (0.6 mg). This activity is characterized by Cook as
“Long Term Androgenic Activity” (cols. 19-20, Table 2).
It is reasonable to presume that structurally similar chemical
compounds have similar properties. See In re Dillon, 919 F.2d 688, 692, 16
USPQ2d 1897, 1901 (Fed. Cir. 1990); Soni, 54 F3d at 749-50, 34 USPQ2d
at 1687. From Cook’s teaching that 7α,11β-dimethyl-19-nortestosterone
enanthate has long term androgenic activity, a person of ordinary skill in the
art would have reasonably presumed that structurally similar compounds,
including compounds differing only in the length of the 17-position alkyl
chain, would also possess long-term activity. Accordingly, in our opinion,
the evidence presented in the Blye 2 Declaration that the claimed 7α,11β-
dimethyl-19-nortestosterone undecanoate is long-acting would have been
expected by a person of ordinary skill in the art from Cook’s disclosure of a
structurally similar long acting nortestosterone.
Appellants have not provided sufficient evidence that the superiority
of the claimed compound over Cook’s enanthate would have been surprising
to a person of ordinary skill in the art – a necessity to establish unexpected
results. Appellants have not explained the degree of difference between the
claimed compound and Cook’s. They show that its activity as determined
by AUC is greater than Cook’s enanthate, but they do not explain why an
increase in activity would be surprising, rather than the normal expected
differences in activity between different compounds. Their own
Specification shows variations between the claimed 7α,11β-dimethyl-19-
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