Appeal No. 95-4439
Application No. 08/063,652
examiner argues, a person having ordinary skill in the art
would have arrived at the subject matter sought to be patented
in claim 18 in view of the combined disclosures of Kim, Eaton,
and Blumbergs. We disagree.
We have no doubt that the prior art could be modified in
the manner proposed by the examiner. This can be seen from a
review of appellants' specification. The mere fact that the
prior art could be so modified, however, would not have made
the modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). On the facts
presented, we disagree that there is adequate reason,
suggestion, or motivation stemming from the prior art which
would have led a person having ordinary skill from "here to
there," i.e., from the 2-(hydrogen, amino, or mercapto)
products of Kim to the 2-fluoro compound of claim 18.
The Eaton reference, cited in appellants' specification
at page 7, lines 7 and 8, discloses a convenient synthesis of
2-fluoroadenine. Blumbergs discloses an 8-step reaction
sequence for preparing 2-fluoro-ara-AMP (fludarabine
phosphate). See particularly column 2, line 45 through column
-6-
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