Appeal No. 95-1640
Application 07/752,138
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1554, 220 USPQ 303, 313 (Fed. Cir. 1983); and Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983).
The examiner also alleges that this same expression
"similarly substituted naphthalenes and anthracenes" would
have rendered obvious to one of ordinary skill in the art the
use of a thianthrene reactant.
It is true that when chemical compounds have "very close"
structural similarities and similar utilities, without more a
prima facie case may be made. See for example In re Wilder,
563 F.2d 457, 460, 195 USPQ 426, 429 (CCPA 1977) (adjacent
homologues and structural isomers); In re May, 574 F.2d 1082,
1090, 197 USPQ 601, 607 (CCPA 1978) (steroisomers); In re
Hoch, 428 F.2d 1341, 1342, 166 USPQ 406, 408 (CCPA 1970) (acid
and ethyl ester). However, where as here Forbus is directed
to polynuclear aromatic compounds and applicants' thianthrene
is a heterocyclic ring structure, there must be adequate
support in the prior art for the equivalence between the
aromatic naphthalene and anthracene and heterocyclic
thianthrene in order to establish a prima facie case and shift
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