Appeal No. 2006-1397 Page 4
Application No. 10/275,377
1993) (citations omitted). The test of obviousness is “whether the teachings of
the prior art, taken as a whole, would have made obvious the claimed invention.”
In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
Fontana teaches that “[s]tolonoxide A, a novel peroxide possessing an
unprecedented molecular arrangement, has been isolated as its methyl ester
from the marine tunicate Stolonica socialis.” Id., Abstract. Fontana goes on to
teach that:
Linear and cyclic peroxides are quite common in marine
organisms belonging mainly to the phylum Porifera. Some
compounds of this family of natural products show interesting
biological activities including inhibition of tumoral cell growth,
antimalarial and antimicrobial properties. In search of new
biologically active metabolites from marine sources, we have
investigated the lipid extract of the Mediterranean tunicate
Stolonica socialis (Hartmeyer Styelidae) collected in Tarifa, Straits
of Gibraltar, South Spain, in June 1996. In this paper, we describe
the structure elucidation of a novel peroxide compound that we
have named stolonoxide A [ ].
Id. at 429.
Thus, as noted by Appellants, Fontana does not teach any biological
activity for the stolonoxide A. See Appeal Brief, page 5. The Fontana reference
merely teaches that some compounds of the family of linear and cyclic peroxides
isolated from marine organisms may inhibit tumor growth. The reference,
however, does not teach that stolonoxide A possesses any of those activities,
and in fact teaches that stoloxinide A has an unprecedented molecular
arrangement. Thus, at most, it merely would have obvious to try to use
stoloxinide A in the treatment of cancer, “[b]ut, ‘obvious to try’ is not the
standard,” and the rejection of claims 8-10 must be reversed. Ecolochem, Inc. v.
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