Appeal No. 96-0769
Application No. 08/203,386
not enough to overcome the prima facie case of obviousness,
which requires objective evidence of actual differences in
properties of the related compounds, not merely alleged
differences related to a newly discovered property which may
be inherently possessed by the prior art compound. Compare2
In re Hoch, 428 F.2d 1341, 1344, 166 USPQ 406, 409 (CCPA
1970). Here, as the examiner has emphasized, there is no
evidence of record regarding actual differences in the
properties of the claim 4 compound and the prior art compound.
Accordingly, we affirm the examiner's rejection of appealed
claim 4.
The rejection of appealed claims 2 and 3 stands on a
different basis. With respesct to these claimed componds, the
UK’567 reference does not exemplify prior art homologs or
isomers of the claimed compounds. It is only by making a
number of fortuitous selections of variables from the
structural formula (I) described at page 1, lines 13-26 that
one may arrive at the "homologs" of the respective componds of
2Compare the specification at page 3, lines 1-16 which
identifies a structural formula that covers the prior art
compound when, inter alia, n is 2.
1
4
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