Ex parte KUKLA et al. - Page 8

                 Appeal No. 1997-1826                                                                                                                   
                 Application No. 08/304,951                                                                                                             

                 from the reference to insert a primary amino group at the 9-                                                                           
                 position of the benzene ring is not well taken (Brief, pages                                                                           
                 7-9; Reply Brief, pages 1-2).  As stated by our reviewing                                                                              
                 court in In re Kemps3                                                                                                                  
                                   [a]lthough the motivation to combine here differs                                                                    
                 from                       that of the applicant, the motivation in the                                                                
                 prior art                           to combine the references does not have to                                                         
                 be identical                        to that of the applicant to establish                                                              
                 obviousness.  In                             re Dillon, 919 F.2d 688, 693, 16                                                          
                 U.S.P.Q.2D 1897, 1901                                 (Fed. Cir. 1990)(in banc).                                                       
                 Accordingly, although Carabateas does not disclose any                                                                                 
                 motivation or suggestion to provide a primary amino                                                                                    
                 substituent at the 9-position of the benzene ring in order for                                                                         
                 the compounds to be useful as intermediates in the preparation                                                                         
                 of appellants’ TIBO compounds, Carabateas does provide a                                                                               
                 motivation or suggestion to one of ordinary skill in the                                                                               
                 analgesic art that 9-primary amino 1,4-benzodiazepine                                                                                  
                 derivatives would have been useful as antagonists of analgesic                                                                         
                 agents.  This is all that is required to establish a prima                                                                             
                 facie case of obviousness.  See Kemps, supra.                                                                                          

                          397 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir.                                                                          

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