Appeal No. 2005-0393
Application 09/536,728
based on structural homology and the expectation that they will have similar properties
with the compounds taught by Olson.
Accordingly, Rejection I is reversed.
II.
The examiner argues that York discloses 2-(substituted phenylimino)
imidazolidines which are structurally similar to the claimed compounds wherein R1 is
ethyl, R2 is NR6R7, R6 is methyl, n-propyl, isopropyl, n-butyl, isobutyl, a-butyl, or t-butyl,
R7 is hydrogen, methyl, ethyl, n-propyl, –butyl, isobutyl, s-butyl or t-butyl, R3 is
hydrogen, R4 is hydrogen and R5 is ethyl. Answer, p. 5. According to the examiner, the
only difference between the prior art compounds and the compounds described in
representative claims 21 and 39 is that R6 is hydrogen atom rather than methyl, ethyl, n-
propyl, n-butyl, isobutyl, s-butyl, or t-butyl group. Id. The examiner points to Example V
and argues that it would have been obvious to one of ordinary skill in the art to replace
the hydrogen atom with a lower alkyl group on the nitrogen atom. Id., p. 6.
In response, the appellants argue that Example V is not within the scope of the
claims. Brief, p. 8. The appellants further argue that in said example, R3 is an -NH2
group; whereas, in the claimed compound, R2 (the position corresponding to R3 in York),
is a substituted amino group or a heterocycle. Id., sentence bridging pp. 8-9. The
appellants contend that the examiner has not adequately explained why one skilled in
the art would have been motivated to modify the prior art compound to arrive at the
claimed invention. Id., p. 9.
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