Appeal No. 95-3340
Application 07/939,172
respective to this difference, first is that the claimed compound
is a homolog of the proffered compound and second that the
claimed compound is so structurally similar to the proffered
compound that one of ordinary skill in the art would have been
motivated to make the claimed compound and to expect it to
possess the same properties as the Rohrback compounds. The
examiner relies upon the secondary references in combination with
Rohrback to provide a method of making the claimed compound.
As stated by the court in In re Jones, 958 F.2d 347,
349-350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992):
The question of "structural
similarity" in chemical patent cases has
generated a body of patent law unto
itself. [footnote omitted] Particular
types or categories of structural
similarity without more have, in past
cases, given rise to prima facie
obviousness; see e.g., In re Dillon, 919
F.2d 688, 692-94, 16 USPQ2d 1897, 1900-
02 (Fed. Cir. 1990) (tri-orthoesters and
tetra-orthoesters), cert. denied,
_____U.S._____, 111 S.Ct. 1682 (1991);
In re May, 574 F.2d 1082, 197 USPQ 601
(CCPA 1978) (stereoisomers); In re
Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA
1977)(adjacent homologs and structural
isomers); In re Hoch, 428 F.2d 1341, 166
USPQ 406 (CCPA 1970)(acid and ethyl
ester).
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