Appeal No. 95-4493
Application 07/756,646
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
render obvious a method for making the claimed compounds. As
stated by the court in In re Hoeksema : 4
Thus, upon careful reconsideration it is our view that
if the prior art of record fails to disclose or render
obvious a method for making a claimed compound, at the
time the invention was made, it may not be legally
concluded that the compound itself is in the possession
of the public [footnote omitted]. In this context, we
say that the absence of a known or obvious process for
making the claimed compounds overcomes a presumption
that the compounds are obvious, based on close
relationships between their structures and those of
prior art compounds.
See also In re Payne, 606 F.2d 303, 314-15, 203 USPQ 245, 255
(CCPA 1979), and In re Brown, 329 F.2d 1006, 1011, 141 USPQ 245,
249 (CCPA 1964). References relied upon to support a rejection
under 35 U.S.C. § 103 must provide an enabling disclosure, i.e.,
they must place the claimed invention in the possession of the
public. In re Payne, 606 F.2d at 314, 203 USPQ at 255.
4399 F.2d 269, 274, 158 USPQ 596, 601 (CCPA 1968).
4
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