Appeal 2006-3252
Application 09/536,728
1 "second" or umpteenth" selection. The Examiner did not have to have a
2 reason for "first" selecting the compound of Example 14 because Olson
3 explicitly tells one that the compound is useful for Olson's purpose.
4 The question then becomes, why modify the compound of
5 Example 14 to account for differences between that compound and, e.g., the
6 compound of Esser claim 23. There are not a "large number of variables"
7 involved. The only "variable" (difference would be a better word) is the
8 ethyl groups on the nitrogen of the Example 14 compound (Formula 6). The
9 relevant question is: Would one having ordinary skill in the art have found
10 it obvious to replace those ethyl groups with methyl groups to "come up"
11 with the compound of Esser claim 23 (Formula 2) for use in the process of
12 Olson. The answer is "yes." Why? Olson tells us in no uncertain terms that
13 the groups which can be attached to the nitrogen are hydrogen and 1-3 alkyl
14 (which means methyl, ethyl, propyl and iso-propyl, or a total of five
15 choices). The KSR reason for changing ethyl to methyl is provided right in
16 the prior art and it manifestly would have been "obvious to try" (in the KSR
17 sense, 127 S. Ct. 1742, col. 2) hydrogen, methyl, propyl or isopropyl in
18 place of ethyl. Section 103 allows one skilled in the art to do so and Esser is
19 not entitled to a claim which preclude one skilled from doing so.
20 The panel made the following observation on page 7 of its opinion:
21 "there is no evidence that the claimed compounds are homologs or that they
22 have the same properties as the prior art [Olson] compounds." At pages 7-8
23 of the opinion, the panel also said there was no expectation that Esser
24 compound (Formula 2) and the Olson compound (Formula 6) would have
25 similar properties. The Olson ethyl compound (Formula 6) and the Esser
28
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Last modified: September 9, 2013