Monday, April 15, 2013

Unexpected properties carry the day in Ex parte ARGADE

from Ex parte ARGADE

Therefore, while we agree with the Examiner’s conclusion that a person of ordinary skill in this art would have reasonably expected “that any of the species of the genus [set forth in Li ‘714, Li ‘013, and Li ‘633] would have the same properties” (Ans. 9 and 8-9) (emphasis added), there was no expectation that compound 60a would exhibit such an unexpectedly higher inhibitory activity than even its closest diastereomer.


As Appellants explain, “‘[o]ver thirty years ago, courts recognized that unexpected properties can show that a claimed compound that appeared to be obvious on structural grounds was not obvious when looked at as a whole,’ [In re Mayne, 104 F.3d 1339, 1342 (Fed. Cir. 1997),] citing In re Papesch[, 315 F.2d 381, 391 (CCPA 1963)]” (App. Br. 6).


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