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.
1996).
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