Appeal No. 2006-2573
Application No. 10/192,055
Admittedly, the claim excludes that species, as it has been carved out
by proviso. However, the claims do not exclude obvious variants of that
compound, such as a compound having a bromo rather than a chloro on the
phenyl ring, or a compound in which ethyl has been substituted for methyl
on the pyridinyl ring.
As noted by the examiner,
the reference teaches a genus (see formula (b) in page 31
of the translation papers) and a species that falls within the
genus (see Table 2, compound II-36, the structural formulae of
the genus and species are depicted below for convenience):
The instant claims exclude a small subgenus, that includes the
reference disclosed compound, from the claims, see the proviso
statement. The reference however, teaches the functional
equivalency of the substituent groups to be alternatives. . . . .
Therefore, the reference teaches the equivalency of methyl,
ethyl, chloro, fluoro, etc. as all these are taught as alternatives
of the ring substituents and thus, the reference clearly suggests
compounds that fall within the genus of instant compounds.
The necessary motivation to make the structurally analogous
compounds of the reference rises from the expectation that
compounds, similar in structure will have similar properties and
therefor, the same use, i.e., as fungicides.
Appellant[s] cite[ ] MPEP § 2144.08 and argue[] that ‘a
large number of variables must be selected or modified with no
guidance from the reference—the similar structures were
already removed by proviso’. This is not found to be
persuasive because one of ordinary skill in the art need to select
or modify only one of the substituent groups to arrive at the
instantly claimed compounds, e.g., 2-ethyl in place of the 2-
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