Appeal No. 1997-3186
Application 08/362,529
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner in the answer that, prima facie, one
of ordinary skill in this art would have found in the combined teachings of the three Kennis references,
the suggestion to substitute a bicyclic 3- benzofuranyl or a bicyclic 3-benzothienyl group6 for the bicyclic
3-indole group of Kennis ‘451,7 or for the bicyclic 3-benzisoxazole or the bicyclic 3-benzisothiazole
group of Kennis ‘663,8 in the 4 - position of the piperidinyl group of the compounds of these two
references as suggested by the use of these same groups in the same position in the closely structurally
related compounds disclosed in Kennis ‘255,9 in the reasonable expectation of obtaining compounds
which have similar properties with respect to the utility as serotonin antagonists with various therapeutic
uses when administered to warm blooded animals.10 Accordingly, prima facie, one of ordinary skill in
this art following the teaching of the combined references would have reasonably arrived at compounds
which satisfy each of the limitations of the claimed compounds encompassed by claim 1. See In re
Payne, 606 F.2d 303, 315, 203 USPQ 245, 254-55 (CCPA 1979) (“An obviousness rejection based
on similarity in chemical structure and function entails the motivation of one skilled in the art to make a
claimed compound, in the expectation that compounds similar in structure will have similar properties.”);
see also In re Jones, 958 F.2d 347, 349-51, 21 USPQ2d 1941, 1943-44 (Fed. Cir. 1992)
(“Conspicuously missing from this record is any evidence, other than the PTO’s speculation (if it be
called evidence) that one of ordinary skill in the herbicidal art would have been motivated to make the
6 See the definition of formula member “X” in appealed claim 1; and the definition of formula member
“B is O, S” in the structure “(a-3)” in Kennis ‘255 (e.g., page 3, lines 40-44 and 49).
7 See the structure “(b)” in the definition of formula member “Q” in Kennis ‘451 (e.g., col. 1, lines 67-
68, and col. 2, lines 23-32); and the definition of formula member “B” as “NR8”, wherein formula
member “R8 is hydrogen,” in the structure “(a-3)” in Kennis ‘255 (e.g., page 3, lines 40-44 and 49).
8 See formula member “X is O or S” in Kennis ‘663 (e.g., col. 1, line 39); and the definition of formula
member “B is O, S” in the structure “(a-2)” in Kennis ‘255 (e.g., page 3, lines 33-37 and 49).
9 Kennis ‘255 teaches that “X is CH in case R1 is a radical of the formula (a-1), (a-2) or (a-3)” which
is the same piperidinyl group structure in the same position as in the claimed compounds and the cited
compounds of Kennis ‘451 and ‘663.
10 See Kennis ‘451 (e.g., col. 11, line 23, and col. 14, line 51, to col. 15, line 22), Kennis ‘663 (e.g.,
col.. 9, lines 17-24), and Kennis ‘255 (e.g., page 14, lines 11-22).
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