Appeal No. 2001-2011 Page 3
Application No. 08/402,413
statement explaining why any of the claims on appeal are unpatentable.2 We are at a
loss as to exactly how and why the examiner proposes combining the references to
arrive at the claimed compounds. For that matter, the examiner’s rejection does not
even identify how the claimed compounds correspond to or differ from the prior art.3
On cursory review of the Kennedy reference, however, we note that Kennedy’s
compound XXI, although unsubstituted at the 6-position, appears to be particularly
close to the claimed compounds in all other respects - provided certain selections are
made for R3, R5 and R6 (we leave it to the examiner to determine whether this is actually
the closest compound described). Indeed, appellant, at least, seems to indicate that
Kennedy teaches “benzothiophene compounds” which differ from the claimed
compounds only in that they “are not substituted at the 6-position.” Brief, page 5.
It may be that somewhere in the references cited by the examiner there is a
reason or suggestion to substitute Kennedy’s compounds at the 6-position in the
manner claimed. If so, the examiner has not identified it. As set forth in In re Kotzab,
217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000):
Most if not all inventions arise from a combination of old elements. []
Thus, every element of a claimed invention may often be found in the
prior art. [] However, identification in the prior art of each individual part
claimed is insufficient to defeat patentability of the whole claimed
2 As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996) (citation omitted), “It is well-established
that before a conclusion of obviousness may be made based upon a combination of
references, there must have been a reason, suggestion or motivation to lead an
inventor to combine those references.”
3 In the future, the examiner would be advised to set forth an obviousness
rejection structured according to the model set forth in MPEP 706.02(j). This will
ensure that the rejection includes a discussion of why one of ordinary skill in the art
would have had reason to make the proposed modifications to the prior art.
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