Appeal No. 2005-0978
Application No. 09/983,232
compounds, represented by formula I in the reference, correspond to some of the
compounds presently claimed by Appellants.” Answer, pages 4-5.
The examiner, continues, “[o]ne having ordinary skill in the art would have been
motivated to arrive at the presently claimed invention because one would have been
motivated to develop other art recognizable methods for inhibiting growth of cancel [sic]
cells by using any or all possible compounds derived from the formula I taught by
Pettersen et al. The presently claimed invention would therefore have been obvious to
one having ordinary skill in the art.” Answer, page 5.
Appellants respond, arguing (Brief, pages 13-14):
Out of all these thousands of possibilities for Pettersen’s Y
substituent, the only selection that would yield a CX1X2X3 group as defined
in Formula IIA of claim 54 under appeal would be mono-, di-, or tri-
substituted methyl (C1-alkyl). Thus even if C1-C20 alkyl were judiciously
selected from one of the myriad of choices presented in Pettersen, methyl
(C1) is but one of twenty. And even assuming the skilled worker would
have selected methyl from all of these available choices, this still would
not be enough because at least one of the methyl hydrogen atoms would
need to be replaced with a non-hydrogen “X” substituent defined in
Appellants’ claim 54 .... There simply is no direction, motivation, or
incentive for the skilled worker to make these selections based on the
generic formula in Pettersen.
Furthermore, appellants argue that “[i]n addition to the above described
differences between the ‘Y’ portion of the Pettersen generic formula and Appellants’
CX1X2X3 group in claim 54 ... the Pettersen generic structure also contains additional
variables Ar, L, and Z. Many of the combinations of Ar, L, and Z as defined in Pettersen
do not correspond to the ‘A’ moiety of Appellants’ claimed Formula IIA.” Brief, page 14.
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