Appeal No. 1997-3186
Application 08/362,529
“any equivalency taught by [Kennis ‘255 with respect to the “head” moiety] is only applicable when the
2-amino substitution is present on the pyrimidinone [“tail”] moiety” (brief, pages 8-9).
The examiner contends with respect to the “obvious to try” standard as explained in In re
O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988), that Kennis ‘255
provides “more than general guidance” with respect to the substitution in the “4-piperidinyl position”
since this reference “gives an indication and direction that the replacement of the bicyclic group” in this
position of the other Kennis compounds “is likely to be successful since they are equivalent in the art”
(see above note 5; Paper No. 10, pages 2-3). The examiner further contends that the compounds of
the Kennis references are “sufficiently close in structure to be considered together” by one of ordinary
skill in the art such that “all of the references together” would have suggested that the substituents in the
4-position of the piperidinyl group of Kennis ‘255 are equivalent and can be used in place of those in
the same position of the compounds of Kennis ‘451 and ‘663, “thus fairly suggesting the instant
compounds with the reasonable expectation that similar pharmacological activities would result”
(answer, page 5). In this respect, the examiner points out that “[a]ll [of the Kennis compounds] are
directed to bicyclic pyrimidinone-alkyl-piperidine compounds having a bicyclic substituent at the 4-
position of the piperidine group” and “are directed to the same kind of pharmacological activity and
therapeutic uses, i.e., as serotonin antagonists and as psychotic agents, anxiolytics and antiagressive
compounds” (id.). The examiner further points out that the compounds of Kennis ‘451 differ solely in
the presence of a “ring nitrogen in the [bicyclic] indole ring (b) at Col. 2” rather than “an oxygen or
sulfur atom” in the same position and Kennis ‘255 “teaches this atom equivalency
at this position” (answer, page 6; see above notes 6 and 7).
We have carefully considered the evidence in the combined teachings of the applied references
in light of the opposing arguments and find ourselves in agreement with the examiner that the combined
teachings of the three Kennis references must be considered for the teachings or inferences that would
have been drawn therefrom by one of ordinary skill in this art. See In re Fritch, 972 F.2d 1260, 1264-
65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992); In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981) (“[T]he test [for obviousness] is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”). We find that one of ordinary skill in this art
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