Appeal No. 2000-0599
Application No. 08/357,363
The examiner=s rationale seems reasonable at first blush, but we find appellants=
position on the matter to be more persuasive. As appellants point out, there is no
indication in Pandit that the dihydroxy material is desirable in and of itself, Pandit=s only
interest in it is as an intermediate, and A[t]here is no indication in [Pandit] or any of the
secondary references that the yield and purity of the material obtained in Pandit was
unsatisfactory for use for the intended purpose, i.e., phosphorylation of the hydroxyl
groups or their linkage via phosphodiester bridges to yield nucleotide analogues.@
Reply Brief, pages 7 and 8. We find ourselves in agreement with appellants that Athere
is no motivation to purify any of the intermediates[,]@ (and there are many intermediates
in Pandit) A[a]s long as the endproduct is sufficiently pure and produced in sufficient
quantities.@ Id., page 6. Moreover, we note appellants argument that A[e]ven assuming
that one would be motivated to purify each intermediate on the route to producing a
desired endproduct, it would be highly inefficient to go to the time and expense of
purifying any intermediate@ from a purity of 45-50% to a purity of greater than 90% and
greater than 95%, as required by claims 30 and 48, respectively. Id.
AThe mere fact that the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior art suggested the
desirability of the modification.@ In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1783-84 (Fed. Cir. 1992) (footnote omitted). In this case, we do not find evidence of a
motivation, suggestion or teaching for modifying Pandit so as to arrive at the claimed
invention.
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