Appeal No. 2003-0890 Page 8
Application No. 09/706,683
similar to those of Abu-Gharbia and those set forth in claims 1-3 on appeal in which the
corresponding ethyl bridging moiety is substituted by phenyl and exhibit the property of
binding to 5-HT1A receptors.
Appellants argue that the examiner's rejection is based upon hindsight. We
disagree. As set forth above, case law establishes that those of ordinary skill in the art
are "motivated" to make structurally similar compounds with the expectation that the
compounds similar in structure will have similar properties. In arguing the examiner's
rejection, appellants focus upon the "most preferred reference compounds." Appeal
Brief, pages 7-8. Be that as it may, a reference must be read in its entirety and not be
subject to a reading limited to the preferred embodiments. In re Mills, 470 F.2d 649,
651, 176 USPQ 196, 198 (CCPA 1972).
The second aspect of appellants' argument is that the applied prior art does not
teach one how to make the compounds of the present invention. Appeal Brief, page 10.
Appellants are of course correct that the applied prior art must be enabling. In re
Payne, at 314, 203 USPQ at 255 ("References relied upon to support a rejection under
35 USC § 103 must provide an enabling disclosure, i.e., they must place the claimed
invention in the possession of the public."). Specifically, appellants only argue
"compounds which have different structures require different starting materials and,
even when the structures seem very similar, an entirely different synthesis route may be
needed." Appeal Brief, page 10. Appellants do not analyze the procedures set forth in
Abou-Gharbia or Cliffe and explain why those procedures would not enable one to make
the claimed compounds as proposed by the examiner. We note that Abou-Gharbia and
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