Ex parte WELCH - Page 4




          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                   

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