Appeal No. 2006-2369 Page 7
Application No. 10/169,618
would have been obvious as per discussion above.” Id. Thus, the examiner urges that
substituting the reactants recited in Appellants’ claim 14 for those used in the examples
of Sony ‘649 would have been obvious in view of the disclosures of Sony ‘649 and Sony
‘775 that the claimed reactants were suitable in the preparation of urethane derivatives
of saccharides. Id.
As stated in In re Oetiker, 977 F.2d 1443, 1445-1446, 24 USPQ2d 1443,
1444-1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability. If that
burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.
. . . .
[T]he conclusion of obviousness vel non is based on the preponderance of
evidence and argument in the record.
With respect to claims reciting chemical compounds, “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.” In re Dillon, 919 F.2d 688,
692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc). “Structural relationships often
provide the requisite motivation to modify known compounds to obtain new
compounds.” In re Mayne, 104 F.3d 1339, 1343, 41 USPQ2d 1451, 1454 (Fed. Cir.
1997).
We agree with the examiner that Sony ‘649 and ‘775, taken together, render the
claims prima facie obvious. Sony ‘649 discloses the preparation of polysaccharide
urethane derivatives which are suitable for use in a “video photographic paper” coating.
Paragraph [0051]. Sony ‘649 discloses that a starch hydrolysate composed of
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