Appeal No. 2000-1024 Page 11
Application No. 08/379,551
teaching that compounds such as PMPA do not have antiviral activity, the prior
art, when read as a whole, teaches away from separating a racemic mixture of
PMPA into its optically pure isomers.
In addition, the examiner also relies upon Adamson and Eli Lilly as
apparently standing for the proposition that an optically pure form of a compound
is per se obvious over a disclosure of a racemic mixture of the compound. See
Examiner’s Answer, page 8 (“The motivation to resolve the racemate of Holy is
fully supported by the case law previously cited dealing with racemates vs.
individual optical isomers.”). One cannot rely on case law alone, however, to
provide the motivation to modify a prior art compound. “[T]he question is
whether there is something in the prior art as a whole to suggest the desirability,
and thus the obviousness, of making the combination." In re Rouffet, 149 F.3d
1350, 1356, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998) (citations omitted). In this
case, the prior art as a whole, as discussed above, teaches away from making
the modification as suggested by the examiner.
Claims 1, 4, 6, 70, 72, 85, 91, 93 and 94 stand provisionally rejected over
the claims of co-pending Application No. 07/925,610. As appellants do not
present any arguments as to why the rejection is improper, but instead note their
intent to file a terminal disclaimer once the copending case is sent to issue, this
rejection is affirmed.
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