Appeal No. 2001-0598 Page 8
Application No. 08/451,090
DISCUSSION
To establish a prima facie case of obviousness, there must be more than the
demonstrated existence of all of the components of the claimed subject matter.
There must be some reason, suggestion, or motivation found in the prior art
whereby a person of ordinary skill in the field of the invention would make the
substitutions required. That knowledge cannot come from the applicants' disclosure
of the invention itself. Diversitech Corp. v. Century Steps, Inc.,
850 F.2d 675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger,
815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985).
Structural relationships have, in the past, provided the requisite motivation or
suggestion to modify known compounds to obtain new compounds; see, e.g., In re
May, 574, F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisimers); In re Wilder,
563 F.2d 457, 195 USPQ 426 (CCPA 1977) (adjacent homologs and structural
isomers); In re Hoch, 428 F.2d 1341, 166 USPQ 406 (CCPA 1970) (acid and ethyl
ester). As set forth in In re Deuel, 51 F.3d 1552, 1558, 34 USPQ2d 1210, 1214:
a prior art compound may suggest its homologs because homologs
often have similar properties and therefore chemists of ordinary skill
would ordinarily contemplate making them to try to obtain compounds
with improved properties. Similarly, a known compound may suggest
its analogs or isomers, either geometric isomers (cis v. trans) or
position isomers (e.g., ortho v. para).
Similarly, as set forth in In re Payne, 606 F. 2d 303, 313-314, 203 USPQ 245, 254-
255 (CCPA 1979):
An obviousness rejection based on similarity in chemical structure
and function entails the motivation of one skilled in the art to make a
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007