Appeal No. 2001-1335
Application No. 08/843,582
102 cannot be predicated on conjecture. W.L. Gore & Assocs. v.
Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 314 (Fed. Cir.
1983); Ex parte Standish, 10 USPQ2d 1454, 1457 (Bd. Pat. App.
Int. 1988). It follows that the section 102 rejection of claim
28 as being anticipated by Bringmann III cannot be sustained.
Regarding the section 103 rejections, we agree with the
appellants that the Bringmann I, Bringmann II and Bringmann IV
references contain no teaching or suggestion that the compounds
disclosed therein possess any kind of pharmaceutical activity
much less an antimalarial activity and therefore would not have
suggested a pharmaceutical composition which contains an
antimalarially effective amount of at least one compound of the
types here under consideration as required by appealed claims 28-
33. According to the examiner, “[s]ince it is known that all
these compounds (Bringmann I, II, IV) are natural products
derived from plants traditionally used for treating malaria, it
is [sic, would have been] obvious for one of ordinary skill in
the art to identify, extract and purify the active ingredients
from the antimalarial plants and prepare the anti-malarial
composition to arrive at the instant [i.e., the here claimed
composition]” (answer, page 9). The examiner’s position is not
well taken for a number of reasons.
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