Appeal No. 95-2879
Application 08/085,657
the issue of homologs and structural similarity between the
referenced groups has not been raised by the examiner.
Rather,
on this record, we find only assertions and allegations by the
examiner that the McLamore reference suggests that alkyl and
phenyl (substituted or unsubstituted) groups are equivalent.
See, e.g., Answer, sentence bridging pp. 6-7. The examiner
has not pointed to any teachings within the patent which
support his position or provide any explanation as to why
these groups are so similar that it would have been obvious to
those of ordinary skill in the art to substitute one for the
other in order to arrive at the claimed invention. In
addition, we find that the examiner has overlooked the fact
that the references must also suggest that the combination of
a substituted phenyl and an aliphatic group will result in the
compound which is capable of lowering blood sugar levels.2
We note the appellants’ arguments throughout the main Brief and Reply2
Brief that the instant compounds are for reducing cholesterol and, not for
reducing blood sugar. We find such arguments to be misguided. It is well
established that the motivation to combine references does not have to be
identical to that of the patent applicant in order to establish a prima facie
case of obviousness. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311
(Fed. Cir. 1996).
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