And Appeal No 94-1146
Application 07/746,050
Japanese patent. The only difference between known
compound and the claimed compound is at the 9, 5 or 13
positions, i.e [sic] the known compound contains ethyl
groups at the said positions while the claimed compound
contains at least one methyl group at the said positions.
Since methyl is a next lower homologue of ethyl, it would
have been obvious to a person having ordinary skill in
the art at the time of the instant invention to
substitute
methyl group for ethyl on the compound of formula 2 with
an expected result. The instant compounds, compositions
and methods are deemed obvious over the Japanese patent.
The two-part test 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, 314-15, 203 USPQ 245, 254-255 (CCPA
1979). First, we must ask whether the undisclosed structure
of the AB-85 antibiotic described by Japan would have been
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 compounds
of formula 1 of Claim 1 as an antibiotic with reasonable
expectation of success. Id. at 313, 203 USPQ at 254. Second,
we must ask whether the prior art would have enabled persons
skilled in the art to make and use the claimed compounds,
i.e., would it have placed the claimed compounds in the
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