Appeal No. 95-2204
Application 08/018,356
that is to say, a similarity in chemical structure and function
between a prior art compound and a claimed compound, whereby one
skilled in the art would have been motivated to make a claimed
compound in the expectation that compounds similar in structure
will have similar properties. In re Payne, 606 F.2d 303, 313,
203 USPQ 245, 254 (CCPA 1979). In essence, therefore, the
examiner would argue that the diamines of claim 32 are so similar
in structure to those of von Bramer that the artisan would have
been motivated to make and use such claimed diamines as primers
expecting them to possess the primer function exhibited by
patentee’s diamines.
On the record before us, however, the examiner has advanced
no support for the proposition that appellants’ claimed and von
Bramer’s disclosed diamines and in particular the ethane versus
1,3-butane substituents thereof are sufficiently similar in
chemical structure whereby the artisan would have expected the
1,3-butane-containing diamine to possess the primer
characteristics of patentee’s ethane-containing diamine.
Moreover, our own research in this matter has failed to reveal
any support for such a proposition. Under these circumstances,
any structural similarity that may exist between the respective
diamines of claim 32 and of von Bramer is inadequate to establish
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