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6 APLA Q. J. 271 (1978)
Prima Facie Obviousness of Chemical Compounds

handle is hein.journals/aiplaqj6 and id is 273 raw text is: PRIMA FACIE OBVIOUSNESS OF CHEMICAL COMPOUNDS BY HELMUTH A. WEGNER I. INTRODUCTION As Judge Rich explained in In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963), a chemical compound and all of its properties are in. separable from the standpoint of patent law. The thing patented in a chemical compound claim is not the formula, which merely gives an identification, but the compound identified by it. What is critical is not the similarity of the formula to that of formulas of the prior art, but the similarity of the compounds and of all of their properties. The first question in determining obviousness is whether the prior art, including structural formulas and the description of properties, sug- gests to the chemical practitioner the desirability of synthesizing and evaluating the compound. If it can be concluded that there is not a sufficient basis to find such suggestion, there is no need to resort to onerous comparative testing, which may impose serious burdens on re- search budgets and time and which may waste scarce testing resources, such as exPerimental animals, needed for productive research. Practi- tioners are urged to consider this determination carefully also from the standpoint of legal strategy, as arguing on the basis of prima facie un- obviousness may have a better chance of success than arguing on the basis of, comparative showings where the degree of superiority may not necessarily.be convincing or Where the reproducibility of the test may depend to some degree on the future availability of the research pro- cedure or lhe specialist.. Sound evaluation of the possibility of prima facie obviousness depends mainly on' a knowledge' of the technical field involved, rather than de- tailed knowledge of Precise boundaries of structural differentiations which may have 'been drawn in prior decisions. Nevertheless, following the case law in a particular area of chemistry provides a reasonable guide to what types of differences in structure can be expected to result in a finding of prima facie obviousness. It is for this reason that I have opened up my personal digest to show the case law development with particular chemical groupings. II. EVOLUTION OF STANDARDS OF PRIMA FACIE OBVIOUSNESS The growth of the chemical industry, and especially filing of patent applications in the field of dyestuffs, gave rise to the need to resolve

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