Interference No. 104,241
embraced by the count, the imidazolinylamino moiety is linked
to a benzimidazole ring, a nitrogen-containing ring system.
There is no evidence which establishes that a person of
ordinary skill in the art would have considered a
benzimidazole ring and a benzoxazine ring to be structurally
similar. In In re Grabiak, 769 F.2d 729, 731, 732, 226 USPQ
870, 872 (Fed. Cir. 1985) the court held an expectation of
similar utility for structurally similar compounds only arose
after presentation of evidence of structural similarity and
similar biological properties. See also In re Payne, 606 F.2d
303, 313, 314, 203 USPQ 245, 254, 255 (CCPA 1979); In re
Gyurik, 596 F.2d 1012, 1018, 201 USPQ 552, 557 (CCPA 1979); In
re Wilder, 563 F.2d 457, 465, 195 USPQ 426, 429 (CCPA 1977).
As the court held in In re Payne at 606 F.2d 313, 203 USPQ
254:
"An obviousness rejection based on similarity in
chemical structure and function entails the
motivation of one skilled in the art to make a
claimed compound, in the expectation that compounds
similar in structure will have similar
properties."[citations omitted]
Because there is no evidence which establishes at a time prior
to Cupps et al.'s effective filing date that Jeon et al.'s
compound would have been considered to be structurally similar
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