Appeal No. 2006-1397 Page 5
Application No. 10/275,377
Southern California Edison Co., 227 F.3d 1361, 1374, 56 USPQ2d 1065, 1075
(Fed. Cir. 2000).
Claim 11 is not drawn to a method of treatment, but to stereoisomers of
stolonoxide A. “When chemical compounds have ‘very close’ structural
similarities and similar utilities, without more a prima facie case may be made.”
In re Grabiak, 769 F.2d 729, 731, 226 USPQ 870, 871 (Fed. Cir. 1985). “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.”
In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Thus, “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).
In this case, the Fontana provides no motivation to make the claimed
compounds as it provides no biological activity for stolonoxide A. The rejection
as to claim 11, therefore, must also be reversed.
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