Appeal No. 2005-0393 Application 09/536,728 347, 350, 21 USPQ2d 1941, 1943 (Fed. Cir. 1992). As we understand the examiner’s position, one must first select the 2-(3-diethylamino-2-methylphenylimino) imidazolidine set forth in Example 14 and then select from the possible R groups listed in col. 3, lines 29-58, to produce one of the claimed compounds. Thus, by picking and choosing, amongst the genus of compounds disclosed by Olson, one of ordinary skill in the art might eventually arrive at a compound within the scope of representative claims 21 and 39. We disagree. In view of the large number of variables taught by the applied prior art, we find that it is necessary for Olson to provide some suggestion or motivation to make the claimed species or subgenus in order to render the claimed invention obvious. In re Baird, 16 F.3d at 382, 29 USPQ2d at 1552. No such teachings have been pointed out by the examiner. Accordingly, given the myriad of possible compounds taught by Olson and the lack of any suggestion to select the R groups necessary to make the compounds described in representative claims 21 and 39, we cannot sustain this rejection. We note the examiner’s argument that the motivation to make the claimed compounds comes from the expectation that they would be useful for the same purpose as the compounds taught by Olson (Answer, p. 4). We agree that structural similarity between the claimed and prior art compounds can provide a reason to make the claimed composition(s) with the expectation that they will have similar properties. In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Obviousness based on structural similarity may arise if the “[s]tructural relations provide the requisite 6Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007