Appeal No. 95-0777
Application 07/756,411
differs from alpha by having a hydroxyl group located at the 4-
position of the phenylacetate ester group of position C-23 (see
the brief, page 4, and the answer, page 4).
The examiner finds that the Gamma compound is structurally
similar to the compounds alpha and beta of Carter II (answer,
page 6). The examiner cites Naito as a secondary reference which
“discloses various groups which can be substituted on antibiotic
glycosidic compounds and includes phenyl moieties which can have
substituents such as -OH” (answer, page 7). The examiner
concludes that this reference (Naito) teaches the equivalence
between H and -OH groups, “motivating one of ordinary skill in
the art to substitute art-recognized equivalent moieties” to
screen for greater antibacterial potency (answer, pages 7 and
11).
The examiner states that “the courts have consistently held
that if the claimed invention is structurally similar to the
prior art compound, non-obviousness can exist only if this novel
structure produces results unexpectedly different from those of
the prior art” (answer, page 7).
Contrary to this assertion by the examiner, the court has
held that, irrespective of any close structural similarity, it is
essential that the prior art applied by the examiner disclose or
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