Appeal No. 95-0576
Application 08/035,546
art describing compounds having close structural similarity, In
re Payne, 606 F.2d at 314-15, 203 USPQ at 255, states:
References relied upon to support a rejection under
35 USC § 103 must provide an enabling disclosure, i.e.,
they must place the claimed invention in the possession
of the public. In re Brown, 329 F.2d 1006, 1011, 51 CCPA
1254, 1259, 141 USPQ 245, 249 (1964). An invention is not
“possessed” absent some known or obvious way to make it.
In re Hoeksema, 399 F.2d 269, 274, 55 CCPA 1493, 1500,
158 USPQ 596, 601 (1968). Hence, the presumption of
obviousness based on close structural similarity is overcome
where the prior art does not disclose or render obvious a
method for making the claimed compound.
Whether or not the references cited in this case describe
compounds with sufficiently close structural similarity to
motivate persons skilled in the art to make the compounds
presently claimed with reasonable expectation of antiparasitic
activity, they would not have enabled persons skilled in the art
to make the claimed compounds. Both Mrozik and GB prepared the
compounds each describes by culturing certain Streptomyces
strains. The compounds isolated by Mrozik have isopropyl and
sec-butyl groups at the 25-position and those isolated by GB have
an isopropylene group substituted by methyl, ethyl, or isopropyl
at the 25-position. There is no indication in either of the
references that the same or similar strains might be cultured to
prepare structurally similar compounds with homologous
substituent groups at the 25-position. Moreover, there is not a
shred of evidence of record that the compounds prepared by the
- 7 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007