Appeal No. 2001-2138
Application No. 08/403,276
In the most recent case relied on by the examiner, In re Deuel, 51 F.3d 1552, 34
USPQ2d 1210 (Fed. Cir. 1995), the court explained that a prima facie case of
obviousness based on structural similarity may arise if the “[s]tructural relations provide
the requisite motivation or suggestion to modify known compounds to obtain new
compounds. For example, 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.”
Id. at 1558, 34 USPQ2d at 1214. The court stressed that “[i]n the case before us there
must be adequate support in the prior art for the . . . change in structure, in order to
complete the PTO’s prima facie case and shift the burden of going forward to the
applicant.” Id., quoting In re Grabiak, 769 F.2d, 729, 731–32, 226 USPQ 870, 872 (Fed.
Cir. 1985). See also, e.g., In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (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 claimed compound, in the
expectation that compounds similar in structure will have similar properties.”); May, 574
F.2d at 1094, 197 USPQ at 611 (“the basis of the prima facie case of obviousness, at
least to a major extent, is based on the presumed expectation that compounds which are
similar in structure will have similar properties.”). Nothing in these cases supports the
examiner’s apparent position that the disclosure of one enantiomer is sufficient by itself to
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