Appeal 2006-3252
Application 09/536,728
1 compound (Formula 2) are indeed homologs in the sense that ethyl is the
2 next adjacent homolog of methyl. A series of organic compound in which
3 each successive member has one more CH2 is a homologous series.
4 Hawley's Condensed Chemical Dictionary, page 606 (12th ed. 1993);
5 Morrison & Boyd, Organic Chemistry, page 87 (6th ed. 1992). While
6 homology gives rise to a general scientific presumption that homologs
7 would be expected to have similar properties, in this case there is no need to
8 rely on any legal presumption based on homology. Olson itself tells us that
9 the hydrogen, methyl and ethyl options are all useful for Olson's purpose.
10 There is absolutely no reason to question the Olson teachings. One skilled
11 in the art would have expected the Olson ethyl compound and the Esser
12 methyl compound to have similar properties—for Olson's purpose or for that
13 matter Esser's purpose albeit Olson's purpose is what defeats Esser
14 entitlement to the claims before us.
15 Disposition of the rejection based on Olson
16 The decision of the Examiner to reject claims 26 and 73-81 over
17 Olson is affirmed.
18 Patentability of claims 73-81 over York
19 Esser claims 73 include numerous compounds, including a subgenus
20 of compounds:
29
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