Appeal No. 1997-3186
Application 08/362,529
modifications of the prior art salts necessary to arrive at the claimed . . . salt.”); In re Dillon, 919 F.2d
688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(in banc) (“This court . . . reaffirms that
structural similarity between claimed and prior art subject matter, proved by combining references or
otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a
prima facie case of obviousness, and that the burden (and opportunity) then falls on an applicant to
rebut that prima facie case.”); In re Grabiak, 769 F.2d 729, 731-32, 226 USPQ 870, 872 (Fed. Cir.
1985) (“[W]e have concluded that generalizations should be avoided insofar as specific chemical
structures are alleged to be prima facie obvious one from the other. . . . [I]n the case before us there
must be adequate support in the prior art for the ester/thioester change in structure, in order to complete
the PTO’s prima facie case and shift the burden of going forward to the applicant.”)
Accordingly, since a prima facie case of obviousness has been established based on the
applied prior art with respect to appealed claim 1 by the examiner, we have again evaluated all of the
evidence of obviousness and nonobviousness based on the record as a whole, giving due consideration
to the weight of appellants’ arguments in the brief and the declaration of Dr. Meert in light thereof.11
See generally, In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263 (Fed. Cir. 1984).
Appellants present two issues in rebuttal (brief, pages 4-5). First, appellants submit that the
examiner is in error in finding that the claimed compounds are structurally obvious. Appellants point to
“representative formulas” of the references and identify the right hand side containing the “ALK” linkage
as the “head” moiety and the left hand side as the “tail” moiety, and allege that the claimed compounds
can only “be obtained by substituting” the entire “head” moiety of the compounds of Kennis ‘25512
which requires severing the compounds of the Kennis references and reconstructing them by adding the
“tail” moiety of one to the “head” moiety of another, which might be “obvious to try” (brief, pages 5-7).
Appellants further point to the “tail” moiety of the compounds of Kennis ‘255, characterizing the same
as involving “amino substitution at the 2-position of the pyrimidinone moiety” and noting that the
compounds of both Kennis ‘451 and ‘663 “have sulfur substitution at this position,” in contending that
11 The declaration was filed April 24, 1996 (Paper No. 9).
12 With respect to appellants’ arguments based on the “029 patent (brief, e.g., page 6), see above note
4.
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