Appeal No. 2001-1933
Application No. 08/940,058
unlikely to be productive of the result sought by the applicant." In re Gurley, 27 F.3d
551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994). If when combined, the references
"would produce a seemingly inoperative device," then they teach away from their
combination. In re Sponnoble, 405 F.2d 578, 587, 160 USPQ 237, 244 (CCPA 1969);
see also, In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)
(finding no suggestion to modify a prior art device where the modification would render
the device inoperable for its intended purpose).
In response to the rejection of the examiner, appellants argue that ?Leonard et
al. incorporates the teaching of Barnes et al. U.S. Patent No. 4,721,723 (‘436 patent,
Col. 2, lines 22-24.), and thereby teaches away from using amorphous paroxetine
hydrochloride. Barnes et al. expressly teaches away from the claimed invention,
asserting the amorphous form of paroxetine hydrochloride as unsuitable for making
stable solid pharmaceutical formulations, and thus discourages any modification by one
of ordinary skill in the art. (Barnes et al., U.S. Patent 4,721,723, Col. 1, lines 46-61).”
Brief, page 8.
Appellants argue that because Leonard (through Barnes) teaches away from
preparing an amorphous paroxetine compound, there is no motivation for combination
with secondary references teaching that amorphous drugs are better absorbed. Thus,
Appellants argue that no prima facie case of obviousness is established because the
combination of references is without basis and motivation. We agree.
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