Appeal No. 95-3056
Application 07/833,718
Under 37 CFR 1.132 filed April 13, 1994 (Paper No. 21 ),1/2
evidence which contradicts the examiner’s optimization theory
with water as the result effective impurity for 2-octynyl
adenosine, indicates that the 2-octynyl adenosine prepared by
Miyasaka and Matsuda becomes more stable as its water content
increases.
In re Dow Chemical Co., 837 F.2d 469, 5 USPQ2d 1529 (Fed.
Cir. 1988), teaches at 473, 5 USPQ2d at 1531:
The consistent criterion for determination
of obviousness is whether the prior art would have
suggested to one of ordinary skill in the art that
this process should be carried out and would have a
reasonable likelihood of success, viewed in light
of the prior art. . . . Both the suggestion and the
expectation of success must be founded in the prior
art, not in applicant’s disclosure.
The prior art here cited against the claims on appeal would
not have suggested to persons having ordinary skill in the art
to reduce the water content of 2-octynyl adenosine to 3% or
less to improve the storage stability of the known
antihypertensive agent or for any other apparent reason. The
examiner here, as did the PTO in Dow Chemical Co., at 473, 5
USPQ2d at 1532:
. . . presents an “obvious to experiment” standard
for obviousness. However, selective hindsight is no more
applicable to the design of experiments than it is to the
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