Appeal No. 2005-0467
Application No. 10/217,278
substitute for objective evidence. In re Pearson, 494 F.2d 1399,
1405, 181 USPQ 641, 646 (CCPA 1974).
Appellants also maintain that the applicants of EP '211 did
not make the claimed compounds and, therefore, "they could not
have realized the properties Appellants' novel compounds possess"
(page 5 of Brief, second paragraph). However, it is not necessary
for a finding of obviousness that the applicants of EP '211
actually made all the compounds disclosed therein, or realized all
their properties. The issue at hand is whether one of ordinary
skill in the art would have been able to make the compounds taught
by the reference, and appellants have advanced no evidence to the
contrary. Furthermore, patentability does not attach to the
discovery of a new property for an old or obvious compound.
Appellants further contend that "[t]here is no recitation,
teaching, or suggestion that the phenyl ring of EP '211 requires
an electron donating group" (page 5 of Brief, third paragraph).
It is sufficient for a finding of obviousness, however, that the
reference teaches the presence of an electron donating group on
the phenyl ring as a viable option, but not a requirement.
Contrary to appellants' arguments, EP '211 need not teach the
"criticality" of selecting electron donating groups to form the
evidentiary basis for a prima facie case of obviousness.
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