Appeal No. 2000-1024 Page 5
Application No. 08/379,551
Holy (US) is cited by the rejection for teaching a racemic mixture of
2-phosphonomethoxypropyladenine (PMPA). PMPA is included in the range of
structures of claim 1. The rejection also references compound 2 in Table 1, as
well as a discussion of the applications of the disclosed compounds, such as
anti-viral activity, in column 4, lines 14-19 of the Holy (US) patent. The rejection
reasons that:
While the corresponding optical isomer is not particularly disclosed,
the claimed R-isomer is held as an obvious variant in view of its
very close structural similarity and the fact that one skilled in the art
would recognize the existence of such isomers and expect one of a
pair to perform better over the other. There is case law regarding
the standards of patentability of optical isomers over the
corresponding racemic mixture which is on point. See for example,
In re Adamson, 125 USPQ 233; Eli Lilly vs. Generix, 174 USPQ 65
regarding the standards of patentability of optical isomers over the
corresponding racemic mixture. Note Karrer, cited in Adamson,
and applied herein is evidence that it is very well known
considerably prior to applicants’ effective filing to consider the
separation of biologically active racemates in order to determine if
one is largely responsible for the desired activity.
Examiner’s Answer, page 5.
Webb (EP or US) is apparently cited for teaching derivatives of the
compounds as taught by Holy (US). According to the rejection, “Webb does not
embrace adenine compound of US Holy but does embrace substituted
derivatives thereof having the same sidechain.” Examiner’s Answer, page 5. Yu
(EP or US) is cited for its disclosure of resolution of one of the racemates
disclosed by Webb “for elucidation of its antiviral properties,” and teaches that
the R isomer is “especially effective for treating HIV.” Id. at 6.
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