Appeal No. 1998-2588
Application No. 08/673,702
group to the carbon at position 3), the examiner fails to identify any disclosure in Cameron
which would lead one skilled in the art to select a particular variable for each of the other
moieties, much less to select the variables in the combination required to arrive at the
claimed compounds.
In our view, the substituted phenyl group is particularly problematic. According to
3
the examiner, to arrive at the claimed compounds, wherein a carbonyl group links R and
4
R , one must not only select -NR R for Cameron’s moiety G, and -(CH ) W (CH ) - for7 8 2 p 2 q
1
Cameron’s moiety Z , but W must be -C(=O) -, p must be 3 and q must be 0. Appellants
concede that Cameron teaches benzothiophenes as a preferred group of compounds, but
argue that “those preferred compounds . . . do not have a carbonyl functional group in the
basic side chain as do the compounds of [the present] invention.” Brief, page 10. The
examiner’s response is simply that “[a]ppellants have given no good reason why one of
ordinary skill in the art could not have simply modified the species of formula I using the
1
clear teaching of Z at page 6 of [Cameron].” As the holding in In re Baird indicates, this is
not the standard of obviousness under 35 U.S.C. § 103. Again, if there is anything in
Cameron which have would have guided one skilled in the art to the particular configuration
required by the claims, the examiner has not identified it.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007