Appeal No. 2000-1024 Page 9
Application No. 08/379,551
because Holy filed and obtained a patent for PMPA and other compounds on the
basis that the compounds are antiviral.
Obviousness is determined in view of the sum of all of the relevant
teachings in the art, not isolated teachings in the art. See In re Kuderna, 426
F.2d 385, 389, 165 USPQ 575, 578 (CCPA 1970); see also In re Shuman, 361
F.2d 1008, 1012, 150 USPQ 54, 57 (CCPA 1966). In assessing the teachings of
the prior art references, the examiner should also consider those disclosures that
may teach away from the invention. See In re Geisler, 116 F.3d 1465, 1469, 43
USPQ2d 1362, 1365 (Fed. Cir. 1997).
DeClercq states that PMPA is an “inactive product[ ]”. DeClercq, page
264. The examiner dismisses that teaching by arguing that, in context, it
appears that DeClercq is referring to the S-isomer. See Examiner’s Answer,
page 7. When a particular isomer is being referred to by the reference, however,
DeClercq seems to indicate as such. Holy (1989) indicates that the replacement
of the primary hydroxy group in HPMPA by a methyl group resulted in the loss of
activity. See Holy (1989), pages 56-57. Thus, both DeClercq and Holy (1989)
teach away from resolving a racemic mixture of PMPA into the currently claimed
enantiomer.
In finding that the above prior art references do not teach away from
separating a racemic mixture of PMPA into its optically pure isomers, the
examiner relies on the Holy (US) patent, apparently bothered by the fact that
Holy, who is also an inventor on the instant application, obtained a patent whose
claims encompass PMPA. The examiner additionally asserts in support of the
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