Subject matter as a whole

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. 

How can there be obviousness of structure, or particularly of the subject matter as a whole, when no apparent purpose or result is to be achieved, no reason or motivation to be satisfied, upon modifying the reference compounds structure Where the prior art reference neither discloses nor suggests a utility for certain described compounds, why should it be said that a reference makes obvious to one of ordinary skill in the art an isomer, homolog or analog of related structure, when that mythical, but intensely practical, person knows of no practical reason to make the reference compounds, much less any structurally related compounds 29... 

A recently reported case (37) presented for determination the question of whether what is obvious to one of ordinary skill in the art is to be determined as of the time the invention was made, as specified in 35 U.S.C. 103, or whether it is to be determined as of some later date when the application is filed. In analyzing the problem and reversing the lower tribunal, the court concluded (44) that .. . 35 U.S.C. 103 is very specific in requiring that a rejection on the grounds the invention would have been obvious must be based on a comparison of the prior art and the subject matter as a whole at the time the invention was made ... 

In determining the patentability of novel homologs, our concern is the "obviousness" statute in our patent law, 35 U.S.C. 103. The phrases discussed are ".. . the subject matter sought to be patented. . . " and ".. . the subject matter as a whole. . These phrases do not mean the same thing. "Obviousness" under Section 103 is a problem of patent law answerable only on the evidence presented as to differences in properties as between a known compound and a claimed compound. The patentability of a compound does not depend on dissimilarity in formulas but on dissimilarities of the tangible embodiments of the two formulas. We have "homologous" cases in the law as well as in chemistry, and it is only upon a study of such cases that a reasonable prediction as to patentability can be made. 

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