Appeal No. 2005-0393
Application 09/536,728
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.” In re
Deuel, 51 F.3d 1552, 1558, 34 USPQ2d 1210, 1214 (Fed. Cir. 1995). However, “there
must be adequate support in the prior art for the . . . change in structure, in order to
complete the PTO’s prima facie case of obviousness and shift the burden of going
forward to the applicant.” Id., quoting In re Grabiak, 769 F.2d 729 , 731-32, 226 USPQ
870, 872 (Fed. Cir. 1985). See also, In re Payne, 606 F/2d 303, 313, 203 USPQ 245,
254 (CCPA 1979)(“An obviousness rejection based on structural similarity in chemical
structure and function entails the motivation of one skilled in the art to make the claimed
compound, in the expectation that the compounds similar in structure will have similar
properties”); In re May, 574 F.2d 1082, 1094, 197 USPQ 601, 611 (CCPA 1978)(“the
basis of the prima facie case of obviousness, at least to a major extent, is based on the
presumed expectation that compounds which are similar in structure will have similar
properties”). Here, however, there is no evidence that the claimed compounds are
homologs or that they have the same properties as the prior art compound. To the
contrary, with respect to their functional properties, Olson discloses that the compounds
taught therein are useful for delaying the onset of egg production in mature laying hens;
whereas, the claimed compounds are said to be useful for treating urinary incontinence
in humans. Thus, on this record, we find no motivation to make claimed compounds
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