Appeal No. 2003-0914 6
Application No. 09/192,713
The appellants however, argue that, “nothing in the description of the six specific
compounds claimed in US ‘705 provides any motivation or suggestion to make anything
other than those particular compounds.” See Brief page 71. It is agreed that, “an obvious
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 In re Payne, 606 F.2d 303, 313-14,
203 USPQ 245, 254-55 (CCPA 1979). It is well settled however, that, “[t]he name
used to designate the relationship between related compounds is not necessarily controlling;
it is the closeness of that relationship which is indicative of the obviousness or
unobviousness of the new compound.” Id. On the record before us the excluded species
of ‘705 differ from the generic formula of the claimed subject matter by the addition or
deletion of methylene units, methyl units or the substitution of a halo unit. Each of these
distinctions fall within the scope of structural obviousness. Accordingly, we conclude that
the closeness of the relationship dictates that the compounds of the claimed subject matter
are obvious variations of the compounds of claim 1 of the ‘705 patent.
It is furthermore the appellants position that inasmuch as any patent granted on the
instant application will expire on the same day as the ‘705 patent, there is no reason to
require a terminal disclaimer as, there is no “[u]njustified or improper extension of the
right to exclude.” See Brief, pages 10 -11. Furthermore, the appellants point out that as
1All references to the Brief are to the Amended Appeal Brief (Paper No. 26).
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