Appeal No. 1997-1390
Application 08/443,616
Likewise, we agree that Cai discloses every feature of the subject matter sought to be
patented in claims 17, 20, and 21 except that the claims include a CH group on each
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naphthyl ring, whereas Cai discloses hydrogen atoms. Additionally, based on a careful
review of the cited reference, we find that Cai discloses a similar method of making the
prior art compounds, and similar properties possessed by those compounds, compared
with the instantly claimed compounds. Under these circumstances, considering the close
structural similarity between the claimed and prior art compounds, the similar method of
making the respective compounds, and the similar properties of those compounds, we
conclude that the claimed compounds would have been prima facie obvious in view of the
cited prior art. Further, on this record, applicants do not rely on objective evidence of non-
obviousness which would serve to rebut the prima facie case. Accordingly, we conclude
that the claimed subject matter, considered as a whole, would have been obvious within
the meaning of 35 U.S.C. § 103 based on the disclosure of Cai.
Applicants' main argument is that Cai does not provide adequate reason,
suggestion, or motivation to modify his naphthyl rings with CH groups in the manner
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claimed. We disagree.
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