Appeal No. 1997-1280 Page 7
Application No. 08/356,912
than all the cited compounds, the test must be sufficient to permit a conclusion regarding the
relative effectiveness of applicant’s claimed compounds and the compounds of the closest
prior art.” In re Payne 606 F.2d 303, 316, 203 USPQ 245, 256 (CCPA 1979).
No such conclusion can be reached based upon the evidence presented herein. The
claimed subject matter is directed broadly to a genus containing more than 100 members of
N-[2,3-dihydro-2-(1-pyrrolidinyl)-1H-inden-1-yl]-N-methyl-benzene- acetamides. Similarly,
the prior art to Pennev contains numerous compounds falling within the class of formula (II)
and within the scope of the claimed subject matter. See column 3, line 12 through column 3,
line 2. Based upon the above considerations, we conclude that the evidence submitted in
the case is insufficient to rebut a prima facie case of obviousness because the claimed
compounds are compared with only one prior art compound. See In re Chupp 816 F.2d
643, 646, 2 USPQ2d 1437, 1439-40 (Fed. Cir. 1987) explaining the decision in In re
Payne 606 F.2d 303, 316, 203 USPQ 245, 256 (CCPA 1979).
Based on the record before us, we find that the results demonstrated in the
comparative examples found in the Declarations of Fortin are not based on the closest prior
art and are entitled to little, if any, weight with respect to the patentability of the claimed
subject matter over the teachings of Pennev. See In re Burckel, 592 F.2d 1175, 1180, 201
USPQ 67, 71 (CCPA 1979).
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