Appeal No. 95-2603
Application 07/915,871
there is no biological activity disclosed by the reference
(reply brief, page 4).
Generalization is to be avoided insofar as specific
structures are alleged to be prima facie obvious one from the
other. In re Grabiak, 769 F.2d 729, 731, 226 USPQ 870, 872
(Fed. Cir. 1985). See also In re Jones, 958 F.2d 347, 349-50,
21 USPQ2d 1941, 1943 (Fed. Cir. 1992). As stated by the court
in Grabiak, 769 F.2d at 731, 226 USPQ at 872, “there must be
adequate support in the prior art for the ester/thioester
change in structure in order to complete the PTO’s prima facie
case and shift the burden of going forward to the applicant.”
Ciampolini is directed to a different utility than appellants’
disclosed utility. We cannot find any suggestion or reasoning
to modify any “positional isomers” of Ciampolini to
investigate Ciampolini’s described electrostatic effects on
the redox behavior of pairs of metal ions. In fact,
Ciampolini discloses at page 3528 that the specific compounds
disclosed were “appropriately designed for the investigation
of the redox activity in solution of pairs of 3d metal ions”
and the most favorable framework for incorporation of 3d metal
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