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A patentable invention is an invention which "novel" under 35 USCA § 102, "useful" under 35 USCA § 101, and "nonobvious" under 35 U.S.C.A. § 103rd § 103 (a) of the Patent Act defines the parameters of the obviousness requirement:

A patent can not be achieved if the invention is not identically disclosed or described as set out in Section 102 of this title, if the differences between the subject matter sought to be patented and the prior art may not be that the object as a whole would seem to time the invention was to a person ordinary skill in the art, on the above issues.

In Graham v. John Deere Co., 383 U.S. 1, 17 (1966), the United States Supreme Court interpreted this language to mean that the ultimate decision on the question of obviousness is a question of law, but based on facts investigated that (1) the scope and content of the state of the art, (2) the differences between the state of the art and the claimed invention, (3) the level of skill in the art, and (4) the objective evidence of non-obviousness .

In order for a patent on a new chemical compound, which must connect the nonobviousness requirement of the time, is invented. Specific questions, however, with chemical patents because unlike electrical and mechanical sciences, chemistry is an unpredictable art. Minor changes in the structures can dramatically to a combination of the properties. Therefore, it is inherently difficult for a court order to the obviousness of an alleged connection with a similar structure to that of the state of the art.

The magnitude of the challenge to the uniqueness of the chemical compounds can be illustrated by the issues facing the court in Yamanouchi Pharmaceutical Co. v. Danbury Pharmacal, 231 F.3d 1339 (Fed. Cir. 2000). In Yamanouchi, the dispute at the heart of whether a person skilled in the art, it would seem that the drug Famotidine by (1) combining the polar tail from lead at 44 with the modified heterocycle from Tiotidine to an intermediate compound, and (2 ) replacing the carbamoyl group in the intermediate connection with a sulfamoyl group to create Famotidine as shown below in Scheme 1 It was known that both were Tiotidine and Tagamet compounds, of which Tagamet was a successful drug in the market, while not Tiotidine in preclinical studies due to its high toxicity. Both compounds, however, shows high potency as inhibitors of gastric acid secretion.

The court upheld the patent in Yamanouchi against an allegation of obviousness. Id in 1345th The court stated, "For a chemical compound, a prima facie case of obviousness is a demonstration of" structural similarity between the front and claimed the subject of art ..., where the technique gives reason or motivation for the claimed compositions . "Id at 1343 (quoting In re Dillon, 919 F.3d 688, 692 (Fed. Cir. 1990)). Even if the claimed connection is not considering the structural similarity, the Yamanouchi Court invalidated a prima facie case of obviousness to a lack of motivation to the state of the art to the claimed invention with similar biological function, that the state of the art.

A. structural similarity

The structural similarity between chemical compounds has a unique and problematic area of patent law. In re Jones, 958 F.2d 347, 350 (Fed. Cir. 1992). In determining the obviousness of a traditional chemical compound, courts previously on the similarity between the structures of an alleged, that the connection and a connection in the art. In re Hass, 141 F.2d 122 (CCPA 1944), In re Henze, 181 F.2d 196 (CCPA 1950).

In Hass, the alleged connection was a homolog of the art with a (Scheme 2). See Hass, 141 F.2d at 125th There was only one more carbon into the alleged connection than the one in the state of the art. The Court of Claims and Patent Appeals stated that the claimed combination was not patentable, unless it showed "some nonobvious or unexpected beneficial properties not owned by the homologous connection in the state of the art." Id The general principle behind the Court's decision was that the chemical and physical properties differ only slightly between the members of a homologous series. The case Id. Henze transformed this principle into a rebuttable presumption was that if the applicant showed "that the alleged connection possesses unobvious or unexpected beneficial properties not on the state of the art homologs." In re Henze, 181 F.2d at 201 Clearly both courts perceived chemical structure and chemical properties as two different considerations. Therefore, for structurally similar chemical homologues a new compound was considered as prima facie evidence apparently because a chemist could expect or assume that the new chemical compounds have the same properties in a system as a similar state of the art.

Inseparable as their structure and properties

According to § 103 was enacted, courts gradually to a holistic view of chemical compounds used as chemical properties in addition to the chemical structures. In re Papesch, 315 F.2d 381 (C.C.P.A. 1971). In ¬ Papesch, an applicant claims that a family of compounds, including representatives with 2,4,6-triethylpyrazolo (4.3-d) -4,5,6,7-tetrahydropyrimidine-5 ,7-dione (ethyl = CH2CH3 ) While the "structurally obvious" in light of an alleged connection 2,4,6-trimethylpyrazolo (4.3-d) -4,5,6.7-tetrahydropyrimidine-5 ,7-dione (= methyl-CH3), as in Scheme 3rd Id at 384th

Comparative tests of the connection trimethyl and triethyl connection of the applicant showed that the latter was an active anti-inflammatory agent during the technology completely inactive with that utility. Papesch The Court noted that the properties of the compounds were used for the obvious, Stressing that the invention as a whole was a connection with its own properties. Id at 390th Moreover, the Court held that proof of non-obvious or unexpected beneficial properties not covered by the state of the art with Mai rebut a prima facie case of obviousness. Id at 391st

A connection, and all its properties are inseparable, they are one and the same thing .... But a formula is not a connection, and while it may in a claim to identity, which is patented, as the boundaries of a meter and indeed identify a property, what is patented is not the formula, but the connection, which is . And the patentability of the thing does not depend on the similarity of the formula to the other, but with the similarity of the former connection to the latter. There is no legal basis for excluding the property in such a comparison. Id

Thus the court generously sponsored chemical patent applications, as long as a claimed invention was new properties, even if the alleged connection shared a similar structure with a state of the art. Papesch The court, however, does not deal with the requirements for establishing a prima facie case of obviousness. The court merely noted that for the case with a presumption of obviousness, the examiner had to consider the characteristics of the invention and the structural similarity. Id

Michael Guth is a legal editor helps the Polish legal drafting by other lawyers. While in Law School, he won an award for the best short of a first year Law School students. He can be reached by e-mail link on the website http://michaelguth.com