Appeal No. 2004-0275
Application No. 09/09/318,186
According to appellants, although Liu states that silica has disadvantages,
and describes the use of a polymer base, Liu does not offer strong motivation to
combine the references because Liu does not prepare chiral selectors onto
polymeric synthesis resin for subsequent use in a step that would correspond to
the synthesis step of the present invention. Brief, page 7. In addition, appellants
argue that Liu describes chiral separation according to step (d), a downstream
step of the claimed process, and it is inappropriate to use Liu as a teaching of
claim 60, synthesis step (a), as Liu fails to disclose or suggest a process of
individually synthesizing a chiral selector onto a polymeric synthesis resin. Id.,
pages 7-8. Thus, according to appellants, one would not be motivated to
combine the references.
However, Liu is used by the examiner as evidence to suggest that a
polymer base has advantages over a silica base in chiral compound selection.
Answer, page 6. In our view, Liu provides a strong motivation to combine with
Welch and Weingarten to establish obviousness because it emphasizes
advantages of a polymer base over a silica base in chiral molecule selection. The
strongest rationale for combining references is a recognition, expressly or
impliedly in the prior art or drawn from a convincing line of reasoning based on
established scientific principles or legal precedent, that some advantage or
expected beneficial result would have been produced by their combination In re
Sernaker, 702 F.2d 989, 994-995, 217 USPQ 1, 5-6 (Fed. Cir. 1983). Liu
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