Appeal No. 1997-1390
Application 08/443,616
582 F.2d F.2d at 640-41, 199 USPQ at 139, has two hydrogen atoms attached at the
7- position of the dihydropteridine ring whereas Wood's claims read on the same
compound di-substituted at that position with methyl groups in lieu of hydrogen. Likewise,
the essential difference between Jennes' Example 2 compound in In re Hoke, 560 F.2d at
437, 195 USPQ at 148, and the most structurally similar of Hoke's compounds is that Hoke
has methyl groups in lieu of hydrogen atoms on the arrowed carbon. This amounts to the
difference between an unbranched alkylene chain and a branched alkylene claim. Finally,
the claimed compounds illustrated in In re Lohr, 317 F.2d at 389, 137 USPQ at 549, are
“homologs” of compounds disclosed in the Haubein reference “with the sole difference
being the presence in the claimed compounds of two methyl groups at the 2 and 6
positions of the heterocyclic nucleus.”
Emphasizing the close structural similarity, and the similarity of utility, between the
claimed compound and prior art compound, the court concluded, in each reported case,
that the claimed subject matter would have been prima facie obvious. Further, in each
case, the court found that applicant had not submitted objective evidence of non-
obviousness sufficient to rebut the prima facie case. Accordingly, in each case, the court
affirmed the PTO's rejection under 35 U.S.C. § 103. We shall do the same.
Here, we agree with the examiner's finding that Cai discloses every feature of the
subject matter sought to be patented in claim 16 except that the claim recites an R'
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