Appeal No. 1997-1816 Application No. 08/178,269 compounds have an OH at this position" (page 5 of Answer). However, the examiner reasons that since Chenard '343 discloses compounds similar in structure to those of Frost having the same utility wherein H and OH are interchangeable at the 4-position of the heterocyclic ring, it would have been obvious for one of ordinary skill in the art to substitute an OH group at the R position of Frost.4 Appellant maintains that the examiner has improperly focused only on the 4-position of the piperidinyl moiety while ignoring "all the other differences which exist between Frost's compounds and Chenard's compounds in an effort to make out a prima facie case of obviousness" (page 25 of principal brief). In particular, appellant contends "Frost also does not even suggest combining the benzo-fused moieties disclosed as part of his compounds with the type of moieties disclosed by Chenard." Also, appellant submits that "Chenard does not teach or suggest combining portions of their compounds with the benzo-fused moieties disclosed by Frost" (page 25 of principal brief). Appellant's argument goes to the heart of the examiner's position that the compounds of Frost and Chenard '343 are -4-Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007