Appeal No. 95-0576
Application 08/035,546
With regard to the prima facie case of obviousness of the
compounds appellants claim in view of the combined teachings of
GB and Mrozik, the examiner states (Examiner’s Answer, page 4,
first full sentence):
[S]ince Mrozik discloses interchangeability of a
hydrogen atom and a sugar moiety at the 13-position
of a closely analogous milbemycin derivative having
antiparasitic activity and since propylene is a next
lower homologue of 2-buten-2-yl, a person having
ordinary skill in the art at the time the instant
invention was made would have been motivated to
modify the compounds disclosed by the British
patent in accordance with the teaching of Mrozik
and to substitute an alkenyl group having 4-carbon
atoms with a lower homologue having 3 carbon atoms
because such a person would have expected the
resulting compounds to possess antiparasitic activity.
Even if the examiner’s findings are supported by the
evidence of record, the examiner still has not sustained the
initial burden of the Patent Office to establish the prima facie
obviousness of the invention appellants claim under 35 U.S.C.
§ 103 in view of the cited prior art. Close structural
similarity between claimed and prior art compounds may provide
all the necessary motivation a person skilled in the art may
require to make the claimed compounds with reasonable expectation
that compounds similar in structure will have similar properties.
In re Payne, 606 F.2d 303, 313-14, 203 USPQ 245, 254-55 (CCPA
1979). However, to sustain a rejection of compounds over prior
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