Appeal No. 1997-1826
Application No. 08/304,951
The examiner concedes that not every disclosure of a
generic formula in a prior art reference that encompasses the
claimed compounds is sufficient to render the claimed species
compounds obvious, citing In re Baird (Answer, page 4). 1
However, as noted by the examiner on pages 2-4 of the Answer,
Carabateas discloses the same basic ring structure as recited
in claim 14 on appeal and the claimed compounds vary only by a
single substituent on the benzene ring of this basic
structure. Carabateas further teaches that various low
molecular weight substituents such as halogen, lower-
alkylamino and amino substituents are relatively equivalent
for purposes of his invention, and exemplifies specific
compounds where the 8-position is substituted by alkylamino
and the 9-position is substituted by halogen (see Carabateas,
col. 1, l. 45-col. 2, l.3; Table C in col. 8, compounds 7J,
7K, 7L, 7M and 7N). Additionally, the reference specifically
teaches how to prepare the unsubstituted amino substituent on
the benzene ring (see Carabateas, col. 3, ll. 24-32). We
agree with the examiner that the compounds recited in claim 14
on appeal would have been fairly suggested by the disclosure
116 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994).
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