Appeal No. 2003-2146 Page 17
Application No. 09/546,143
set forth in appellants’ claims 25 and 26 are obvious in view of a disclosure of the
trans- and cis-isomers of the generic formula set forth on column 9 of Barbier.
This is error. Ochiai at 1572, 37 USPQ2d at 1133 (“reliance on per se rules of
obviousness is legally incorrect and must cease.”).
We recognize, as set forth in In re Deuel, 51 F.3d 1552, 34 USPQ2d 1210
(Fed. Cir. 1995), 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. 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.”). However, as set
forth in In re Doyle, 63 USPQ2d 1161, 1162 (Fed. Cir. 2002), footnote omitted,
Like a human hand, a chiral molecule cannot be
superimposed on its mirror image, otherwise known as its
enantiomer. Altering the relative orientation of the groups bonded
to the various chiral centers of a molecule (i.e., creating a different
stereoisomer of the compound) can have profound effects on the
compound’s properties, especially with respect to how the
compound interacts with other chiral molecules.
Thus, assuming arguendo that it would have been prima facie obvious to a
person of ordinary skill in the art to separate the cis- and trans-conformations of a
compound of formula III in Barbier, the examiner failed to identify any evidence
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