Appeal No. 1998-0365
Application No. 08/501,336
the Doehner et al. reference, one skilled in the art would arrive at the instant claimed
compounds.”
The initial burden of presenting a prima facie case of obviousness rests on
the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). As argued by appellants (Brief, page 8) “there is nothing in the
disclosure of Doehner et al suggesting that one should select the specific
substituents that are recited in the instant claims.” As appellants argue (Brief, page
8) even Doehner’s preferred embodiments fail to lead one toward the claimed
invention. Barnes fails to make up for the deficiency in Doehner. However, even if
one were to select the specific substituents recited in the instant claims, the
examiner failed to identify in either of the references where a suggestion can be
found to order the substituents on the ring in the manner required by the claimed
invention.
To establish a prima facie case of obviousness, there must be more than the
demonstrated existence of all of the components of the claimed subject matter.
There must be some reason, suggestion, or motivation found in the prior art
whereby a person of ordinary skill in the field of the invention would make the
substitutions required. That knowledge cannot come from the applicants' disclosure
of the invention itself. Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675,
678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686, 688,
2 USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning Corp. v. Feil, 774
35 U.S.C. § 112, fourth paragraph.
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007