Appeal No. 94-3351
Application 07/919,679
basis to support the contention that the cited prior art
compounds are structurally similar to the instantly claimed
compounds. However, statements by the examiner that the claimed
serotonergic agents act as 5-HT antagonists or agonist ?are not
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germane to any issue at hand? (Answer, page 8) and the statement
that the methods of using the claimed compounds (the utility of a
compound is based on its properties) are not under consideration
(Answer, page 5) are inconsistent with legal theories of
structural obviousness. In this regard, we point out to the
examiner that an obviousness rejection based on similarity in
chemical structure and function entails the motivation of one
skilled in the art to make a claimed compound in the expectation
that compounds similar in structure will have similar properties.
In re Gyurik, 596 F.2d 1012, 1018, 201 USPQ 552, 557 (CCPA 1979);
In re May, 574 F.2d 1082, 1094, 197 USPQ 601, 611 (CCPA 1978); In
re Hoch, 428 F.2d 1341, 1344, 166 USPQ 406, 409 (CCPA 1970).
Thus, the expectation that compounds similar in structure will
have similar properties leads one to the conclusion that the
compounds will have similar utilities.
In the case before us, the relied upon prior art references
to Watts and King describe their compounds as having multiple
identical utilities (see Watts at column 4, lines 47 through 56
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