Appeal No. 2005-0590
Application 09/854,435
units of Sparer in the polyorthoesters of Heller in the reasonable expectation of obtaining
bioerodible polyorthoester polymers having the same or similar properties, as submitted by the
examiner. Indeed, we find that these same facts provide substantial support for the position that,
prima facie, one of ordinary skill in this art would have modified the polyorthoesters of Sparer
by using the α-hydroxyacid containing unit(s) taught by Sparer in the reasonable expectation of
obtaining bioerodible polyorthoester polymers having the same or similar properties.
Accordingly, we are convinced that, prima facie, one of ordinary skill in this art routinely
following the combined teaching of Heller and Sparer would have reasonably arrived at the
claimed polyorthoester polymers encompassed by claim 1, without resort to the written
description in appellants’ specification. See In re Payne, 606 F.2d 303, 315, 203 USPQ 245,
254-55 (CCPA 1979) (“An obviousness rejection based on similarity in chemical structure and
function entails the motivation of one skilled in the art to make a claimed compound, in the
expectation that compounds similar in structure will have similar properties.”); see also In re
Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(in banc) (“This court . . .
reaffirms that structural similarity between claimed and prior art subject matter, proved by
combining references or otherwise, where the prior art gives reason or motivation to make the
claimed compositions, creates a prima facie case of obviousness, and that the burden (and
opportunity) then falls on an applicant to rebut that prima facie case.”); In re Grabiak, 769 F.2d
729, 731-32, 226 USPQ 870, 872 (Fed. Cir. 1985) (“[W]e have concluded that generalizations
should be avoided insofar as specific chemical structures are alleged to be prima facie obvious
one from the other. . . . [I]n the case before us there must be adequate support in the prior art for
the ester/thioester change in structure, in order to complete the PTO’s prima facie case and shift
the burden of going forward to the applicant.”).
We have determined that the examiner has advanced a prima facie case of obviousness
and thus, we again evaluated all of the evidence of obviousness and nonobviousness based on the
record as a whole in light of appellants’ rebuttal arguments in the brief. See generally, In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Appellants submit that the examiner has not established a prima facie case of
obviousness because one of ordinary skill in the art would not look to Sparer to modify Heller,
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