Appeal No. 95-0976
Application No. 07/936,558
obvious on its face. Moreover, to meet the claimed structure
one would not be "shifting" the substituent, but duplicating
it since the claimed compounds retain alkyl ether amine
substituents at the Orn position. Even if one of ordinary
skill in the art were to duplicate the substituent at the Orn
position it is an ether amine while the claimed substituent
alkyl amines at the Thr position are not ethers.
A fundamental flaw in the examiner's reasoning that led
to the examiner's conclusion of obviousness is the examiner's
reliance on a proposition that making a change is "within the
expected skill in the art." As explained by the Federal
Circuit in In re Vaeck, supra, the obviousness of a claimed
compound must be based on the teachings of the prior art and
not on whether an artisan of ordinary skill could produce the
claimed compounds from compounds known in the prior art. In
this case the prior art contains no suggestion that one should
make the claimed compounds.
It is well-established that hindsight shall not form
the basis of a conclusion of obviousness under 35 U.S.C. §
103. “Both the suggestion and the expectation of success must
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