Appeal No. 2000-1024 Page 8
Application No. 08/379,551
Holy (US), Webb (EP or US), Yu (EP or US), Starrett, Holy (EP) and Karrer does
not meet this criteria and thus fails to set forth a prima facie of obviousness.
In the rejection above, the examiner states with respect to the separation
of the racemates of Holy (US) that “it is very well known considerably prior to
applicants’ effective filing to consider the separation of biologically active
racemates in order to determine if one is largely responsible for the desired
activity,” see Examiner’s Answer, page 5, but does not set forth any facts or
findings to support the motivational statement, especially since all that is
currently being claimed is a single isomer, i.e., the R isomer. See In re Lee, 277
F.3d 1338, 1343-44, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002) (in reviewing
an obviousness rejection, the court noted that “conclusory statements” as to
teaching, suggestion or motivation to arrive at the claimed invention “do not
adequately address the issue”).
With respect to the additional references cited by the examiner for
teaching the various other substituents required by the claims, the only
motivation that the examiner provides for making the combination is structural
similarity. As noted above, however, structural similarity is not enough, but there
must also be some teaching, suggestion, or motivation provided in the prior art to
make the combination.
Moreover, appellants also argue that the art teaches away from isolating
PMPA or PMPDAP from its isomer. Appellants cite Holy (1989) and DeClercq
for teaching that PMPA is an inactive product. See Appeal Brief, pages 19-23.
The examiner did not find the teaching away references to be persuasive
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