Appeal No. 1998-2587
Application No. 08/451,993
in the record that would have motivated those skilled in the art to resolve the
racemic mixture of instant claim 25 and isolate the (1S) stereoisomer. Even
when obviousness is based on a single reference, that reference must contain
some suggestion or motivation to modify its teachings in order to produce the
claimed compound. See In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313,
1316-17 (Fed. Cir. 2000); In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258
(Fed. Cir. 1984). The examiner’s unsupported reference to the practices of the
Food and Drug Administration cannot be relied on to provide the required
motivation. The provisional rejection is reversed.
Other Issues
Appellants’ U.S. Patent 5,658,920, issued Aug. 19, 1997, claims the
hydrochloride and methanesulfonate salts of the compound of instant claim 25.
Neither instant claim 25 nor the claims of the ‘920 patent specify a particular
position 1 stereoisomer. The examiner should consider whether the specific
salts claimed in the ‘920 patent are patentably distinct from the generic salt
recited in instant claim 25. If they are not patentably distinct, a rejection of
instant claim 25 for obviousness-type double patenting would be appropriate.
Summary
The examiner has not shown, by a preponderance of the evidence, that
undue experimentation would have been required to practice the full scope of the
claimed invention. We therefore reverse the rejection for non-enablement and,
consequently, the rejections for anticipation. We also reverse the provisional
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