Appeal No. 2002-0448 Page 6
Application No. 09/194,824
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).
However, as set forth in In re Deuel, 51 F.3d 1552, 1558, 34 USPQ 2d,
1210, 1214-1215:
Structural relationships may 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. Similarly, a
known compound may suggest its analogs or isomers, either
geometric isomers (cis v. trans) or position isomers (e.g., ortho v.
para).
For example, in In re Shetty, 566 F.2d 81, 85, 195 USPQ 753, 756 (CCPA 1977)
the examiner noted that the claimed compound differed from the prior art
compound by “a mere methylene group … and concluded that ‘this minor
molecular modification would clearly be obvious to the pharmaceutical chemist.’”
The Shetty court, agreed with the examiner’s position, finding “that a person
skilled in chemical and/or pharmaceutical arts would not hesitate to extend the
alkylene linkage of the prior art compound.” Similarly, as set forth in In re Payne,
606 F.2d 303, 313-14, 203 USPQ 245, 254-55 (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. 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
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