Appeal 2006-3252
Application 09/536,728
1 close because the amino group is in the 6-position and Esser requires an
2 amino group in the 5-position.
3 The Examiner's rejection based on Stähle is not a case where an
4 inventor has used a known element for its intended purpose to get an
5 expected result. We have been unable to find a reason why one having
6 ordinary skill in the art would have been inclined to depart from the precise
7 teachings of Stähle. KSR notes that "it can be important to identify a reason
8 that would have prompted a person of ordinary skill in the relevant field to
9 combine the elements in the way the claimed new invention does." 127 S.
10 Ct. at 1741, col. 1, 82 USPQ2d at 1396.
11 In this case, the "relevant field" is the field of Stähle looking for new
12 hypotensive compounds. The Stähle patent, which is the only evidence
13 relied upon by the Examiner in support of the rejection, is narrowly drawn
14 and does not suggest much to one of ordinary skill in the art beyond its "four
15 corners." To the extent that (1) there is a "next adjacent homologue rule" as
16 mentioned by Weston, and (2) methyl (―CH3) might in an appropriate
17 circumstance be regarded as the next adjacent homologue of hydrogen
18 (―H), this case is not that case. The teachings of Stähle are too narrowly
19 drawn to permit broad inferences for departing from those narrow teachings.
20 Hoeksema likewise provides little comfort to support the rejection.
21 In that case, the CCPA reversed an obviousness rejection because the prior
22 art did not have an enabling description for making the Hoeksema
23 compounds. Accordingly, any discussion about substituting a methyl for a
24 hydrogen or vice-versa is dicta.
21
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