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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