Appeal No. 95-3340
Application 07/939,172
None of these structurally similar types are involved here.
Moreover, generalization should be avoided insofar as specific
chemical structures are alleged to be prima facie obvious in view
of one another. In re Grabiak, 769 F.2d 729, 732, 226 USPQ 870,
872 (Fed. Cir. 1985). Note also the court's comment in the
decision of In re Rosselet, 347 F.2d 847, 851, 146 USPQ 183, 186
(CCPA 1965) that "We do not herein hold, impliedly or otherwise,
that any compound differing from the prior art solely by a
hydroxy or methyl group is deemed prima facie obvious in view of
that art..." Thus the obviousness of chemical compounds must be
decided on a case by case basis.
On the basis of the record before us, we cannot sustain
the examiner's position and conclusion that the claimed compound
and the proffered compound of Rohrback are so closely related in
structure as to render the claimed compound prima facie obvious.
There are two leaps made by the examiner which are unsupported by
evidence. The first is that one of ordinary skill in the art
would have made the selections proposed by the examiner for n, M,
X, Y and Z. Cf. Merck Co., Inc. v. Biocraft Laboratories, Inc.
874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989); and In re Susi,
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