Ex Parte Esser et al - Page 6




                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                                 

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