Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE GIORGIO WINTERS
Appeal No. 88-1423
November 28, 1988
Application for Patent filed December 19, 1983, Serial No. 562,796. New Pharmacologically Active Pyrazolopyridines.
Jerry Voight et al. for appellant
Primary Examiner--Henry R. Jiles
Before Torchin, Winters, and Downey
This appeal was taken from the examiner's decision refusing to allow claims 42 through 44, which are all the claims remaining in this application.
Claim 42 is representative.
42. A 4,7-dihydropyrazolo[3,4-b]pyridine-5-carboxylic acid derivative of the formula:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
wherein R represents a methyl group; R@1 represents a C@4 alkyl group; R @2 represents a 2-methylphenyl group; R@3 represents a methyl group; and R@4 4 represents hydrogen; or a physiologically acceptable salt thereof.
The issues presented for review are:
(1) Whether the examiner correctly rejected claims 42 through 44 under 35 USC 102(g)/103 as unpatentable over suggested claim III set forth in Paper No. 12 dated May 6, 1986; and
(2) Whether the examiner correctly rejected claims 42 through 44 under 35 USC 112, first paragraph, as based on a disclosure which does not contain an adequate written description of the subject matter of these claims.
We shall not sustain the examiner's prior art rejection under 35 USC 102(g)/ 103. We do, however, sustain his rejection under 35 USC 112, first paragraph.
Initially, we note that appellant has not argued the patentability of dependent claims 43 and 44 separately from independent claim 42. Accordingly, we shall treat the former as standing or falling with the latter. See In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979).
Considering first the prior art rejection, we note that the examiner suggested claim III for the purpose of interference in Paper No. 12 mailed May 6, 1986. Appellant refused to make the suggested claim, as seen from Paper No. 14, page 5. On these facts, we agree that appellant's refusal to make the suggested claim constitutes a concession that the subject matter of that claim is prior art as to appellant within the meaning of 35 USC 102(g) and 35 USC 103. Otherwise stated, appellant's refusal to make the suggested claim constitutes a disclaimer of the invention covered by that claim and appellant is not entitled to claims which do not define patentably over suggested claim III. See In re Ogiue, 517 F.2d 1182, 186 USPQ 227 (CCPA 1975); In re Tobias, 343 F.2d 495, 145 USPQ 217 (CCPA 1965); In re Fenn, 315 F.2d 949, 137 USPQ 367 (CCPA 1963); MPEP 2305.01.
*2 Comparing appealed claim 42 with suggested claim III, we find that the former defines a subgenus of compounds falling within the broad genus set forth in the latter. Generally speaking, there is nothing unobvious in choosing "some" among "many" indiscriminately. Some compounds, falling within the scope of a prior art genus, are unpatentable in the absence of a showing of unexpectedly superior results. See In re Lemin, 332 F.2d 839, 141 USPQ 814 (CCPA 1964). So here, the examiner has established a prima facie case of obviousness and appellant's subgenus of compounds is unpatentable in the absence of a showing of unexpectedly superior results. Also, see In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Appellant relies on the Dage declaration filed under Rule 132 as rebutting the examiner's prima facie case of obviousness. In the declaration, a copy of which is attached to the main brief as Exhibit B, Dage compares a species within the scope of claim 42 with its closest prior art compound for in vitro potency as calcium antagonists and in vivo hypotensive potency in rats. The declaration establishes that the claimed species (wherein R@1 is 2- methylpropyl and R2 is 2-methylphenyl) is unexpectedly more potent in both in vitro and in vivo testing.
With respect to the Dage declaration, the examiner "concedes that the tests remove the prima facie obviousness of the compound tested", that is, the species wherein R@1 is 2-methylpropyl and R2 is 2-methylphenyl. See Paper No. 21 mailed May 19, 1987, page 2. Nevertheless, the examiner concludes that the declaration is insufficient because the objective evidence there presented is not commensurate in scope with claim 42. We disagree.
Certainly, objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); In re Greenfield, 571 F.2d 1185, 197 USPQ 227 (CCPA 1978); In re Tiffin, 443 F.2d 394, 170 USPQ 88 (CCPA 1971). By the same token, appellant is not required to test each and every species within the scope of the appealed claims and compare same with the closest prior art species. Rather, patentability is established by a showing of unexpected superiority for representative compounds within the scope of the appealed claims. What is representative is a factual question which is decided on a case-by-case basis. Here, we find that: (1) the narrow subgenus of compounds defined in claim 42 embraces only four species or a physiologically acceptable salt of those species; (2) the four species defined by claim 42, wherein R1 represents a C@4 alkyl group, are closely related isomers; and (3) the evidence presented in the Dage declaration irrefutably establishes that one of the claimed species possesses unexpectedly superior results compared with the closest prior art compound. On these facts, we conclude that the declaration showing is adequately representative and rebuts the prima facie case of obviousness of claim 42. We note the examiner's speculation that the declaration evidence may reflect only an anomalous "interaction" between the 2- methylpropyl group and the 2-methylphenyl group which causes an unexpected and surprising increase in potency for the claimed species. This speculation, however, is not supported by any facts of record or by sound scientific reasoning.
*3 We turn to the examiner's rejection of claims 42 through 44 under 35 USC 112, first paragraph, as based on a disclosure which fails to provide an adequate written description of the subject matter of these claims.
Initially, we note that the examiner's rejection is based on the lack of written description and that the description requirement is separate and distinct from the enablement requirement also found in 35 USC 112, first paragraph. It is not necessary that the claimed subject matter be described identically, but the disclosure originally filed must convey to those skilled in the art that applicant had invented the subject matter later claimed. Precisely how close the original description must come to comply with the description requirement of § 112 must be determined on a case-by-case basis. The inquiry into whether the description requirement is met is a question of fact. See In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed.Cir.1984).
On the particular facts of this case, we agree with the examiner that the subgenus of compounds defined in claim 42 is not described in appellant's original disclosure. We note that claim 42 embraces four species wherein R1 represents a C@4 alkyl group, and the physiologically acceptable salts of those species. But the original disclosure does not describe any of those species either by way of working example or otherwise. There is no support for any of those species per se.
Nor are there guidelines in the original disclosure which would lead a person having ordinary skill in the art toward the subgenus of compounds defined in claim 42. On the contrary, the written description in appellant's specification tends to lead away from the subgenus. In this regard, note the preferred group of compounds described in the specification, page 6, wherein the definition of R@1 precludes C@4 alkyl. Note also Examples 41 through 52 in the specification, wherein R@1 is a C@4 alkyl group but R@2 is never 2- methylphenyl.
The situation is aggravated on this record in view of the Dage declaration showing unexpectedly superior results. Quite clearly, the original specification disclosure does not convey to those skilled in the art that the subgenus of compounds set forth in claim 42 possesses unexpectedly superior results. Compare Bigham v. Godtfredsen, --- F.2d ----, 8 USPQ2d 1266 (Fed.Cir.1988). On the facts of this case, we hold that claims 42 through 44 do not find adequate written description in appellant's original specification disclosure.
In conclusion, we do not sustain the examiner's prior art rejection of claims 42 through 44. We do, however, sustain the rejection of those claims under 35 USC 112, first paragraph. Accordingly, the examiner's decision refusing to allow claims 42 through 44 is affirmed.
*4 37 CFR 1.136(a) does not apply to the times for taking any subsequent action in connection with this appeal.
BOARD OF PATENT APPEALS AND INTERFERENCES
Norman G. Torchin
Sherman D. Winters
Mary F. Downey