Appeal 2007-1821
Application 11/040,964
nortestosterone undecanoate and the related bucyclate (e.g., Specification,
compare Fig. 5 to Fig. 15).
Finally, Dr. Blye calls the results “superior” (Blye 2 Declaration 1: ¶
4), but falls short of characterizing them as “unexpected” or “surprising.” In
their Brief, Appellants state that “[a]s set forth in Exhibit 3, paragraph 4-6,
the … [claimed compound] has unexpected and superior properties” (Br. 9).
However, Dr. Blye never uses the term “unexpected” in describing his
results. “Mere improvement in properties does not always suffice to show
unexpected results.” Soni, 54 F3d at 751, 34 USPQ2d at 1688.
In sum, we find that Cook’s teaching that the 7α,11β-dimethyl-19-
nortestosterone enanthate was active over a ten-week period would have led
a person of ordinary skill in the art to reasonably expect that claimed
compound, which is structurally similar to Cook’s compound, would possess
long-acting androgenic properties. Appellants have not demonstrated
against this baseline expectation that a person of skill in the art would have
found the results set forth in Blye 2 Declaration unexpected and surprising to
a person of ordinary skill in the art.
For the foregoing reasons, we affirm the rejection of claim 82.
Because they were not separately argued, claims 83 and 84 fall with claim
80.
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