Appeal No. 2001-0598 Page 9
Application No. 08/451,090
claimed compound, in the expectation that compounds similar in
structure will have similar properties. In re Gyurik, 596 F. 2d 1012,
1018, 201 USPQ 552, 557 (CCPA 1979); See In re May, 574 F. 2d
1082, 1094, 197 USPQ 601, 611 (CCPA 1978); In re Hoch, 57
CCPA 1292, 1296, 428 F. 2d 1341, 1344, 166 USPQ 406, 409
(1970). … When prior art compounds essentially "bracketing" the
claimed compounds in structural similarity are all known as
pesticides, one of ordinary skill in the art would clearly be motivated to
make those claimed compounds in searching for new pesticides.
Stated differently, “[i]n obviousness rejections based on close similarity in chemical
structure, the necessary motivation to make a claimed compound, and thus the
prima facie case of obviousness, rises from the expectation that compounds similar
in structure will have similar properties.” In re Lalu, 747 F.2d 703, 706, 223 USPQ
1257, 1259 (Fed. Cir. 1984). Therefore, we can not agree with the examiner’s
position (Final Rejection, page 8) that “[r]egardless of use, it is the compound
structures and compositions comprising these compound structures that are
rendered obvious by the prior art teachings….”
Notwithstanding the fact that none of the types of structural similarity referred
to above are involved here, the examiner finds (Final Rejection, page 2) that ‘795
teaches “amino acid derivative compounds of generic formula [X-Z-NR2-CHR3-
CHOH-(CH2)n-NR4-E-Y] … which are similar to those of the instant claim 1….”
According to the examiner (Final Rejection, page 3) “the instant claims … read on
the broad genus of compounds and compositions taught by … [‘795].”
While appellants do not dispute (Brief, pages 6-7) that their claimed
invention overlaps the genus of compounds set forth in ‘795, they point out (Brief,
page 8) that the subject matter of ‘795 is directed to rennin inhibitors and not to viral
protease inhibitors, a property of the claimed compounds. Here, there is no
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