Appeal No 94-1046
Application 07/747,456
since a person having ordinary skill in the art at the
time the instant invention was made would have expected
the claimed compound to have biological activity similar
to that of the reference’s compound, the claimed compound,
composition containing the same and methods of treatment
would have been prima facie obvious to a person having
ordinary skill in the art at the time the instant
invention was made.
The two-part criteria for holding that a claimed compound
would have been obvious under Section 103 over the disclosure of
a structurally similar compound in the prior art is set out in
In re Payne, 606 F.2d 303, 313-15, 203 USPQ 245, 254-255 (CCPA
1979) and is particularly applicable to this case. First, would
the undisclosed structure of the AB-85 antibiotic described by
Japan be understood by persons having ordinary skill in the art
to be so similar to formula 1 of appellants’ Claim 1 that they
reasonably would have been led to make and use the compound of
formula 1 of Claim 1 for its antibiotic function with reasonable
expectation of success. Id. at 313, 203 USPQ at 254. Second,
would the prior art have enabled persons skilled in the art to
make and use the claimed compounds, i.e., would it have placed
the claimed compound in the possession of the public. In re
Payne, 606 F.2d at 314-15, 203 USPQ at 255. We need not dwell on
the first criteria, because the examiner has not supported his
allegation that the claimed antibiotic compound would have been
obvious with evidence sufficient to justify a conclusion that the
prior art would have enabled one skilled in the art to make and
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