Appeal No. 94-3007
Application 07/809,039
of the agent but also to render the agent useless for treating
bacteria or for preparing antibacterial agents. Since the
examiner’s case is based entirely on structural similarity,
and he has proffered no evidence to contradict the evidence
favoring patentability, we find that the greater weight of the
evidence of record favors patentability.
In short, persons having ordinary skill in the art,
having prior knowledge of all the evidence of record, would
not have been motivated simply by close structural similarity
to reasonably expect that cyclic peptide ring position isomers
and anhydrides of known prior art antibacterial agents would
be useful in treating bacterial infections. To the contrary,
prior art cyclic peptides which had been similarly modified
had been rendered useless.
We understand the examiner’s apparent view that the close
structural similarity of compounds when considered by artisans
isolated from the knowledge in the art might very well support
a prima facie case of obviousness under 35 U.S.C. § 103. In
this case, however, the examiner must recognize the knowledge
in the art. Persons having ordinary skill in the art bring
all the knowledge in the art with them when reading a
reference. See In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d
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