Appeal No. 2001-1335
Application No. 08/843,582
used in folk medicine for treating, for example, malaria. In
this regard, we point to the Boyd declaration under 37 CFR
§ 1.132 of record which evinces, inter alia, that “[t]he vast
majority of compounds isolated from plants purportedly used in
folk medicine do not exhibit the biological activity associated
with the medicinal application for which the plant is purportedly
used in folk medicine” and that, “[i]ndeed, the vast majority of
compounds isolated from plants, including plants purportedly used
in folk medicine, do not exhibit any biological activity
whatsoever when subjected to biological screening” (item 8).
Particularly in view of this declaration evidence, it is apparent
that the examiner’s conclusion of obviousness is inappropriately
based upon an “obvious to try” standard which is not the proper
standard under section 103. In re O’Farrell, 853 F.2d 894, 904,
7 USPQ2d 1673, 1681 (Fed. Cir. 1988). Stated otherwise, the
prior art applied by the examiner, including the Bringmann V and
Ruangrungsi references, contain nothing which would have given an
artisan with ordinary skill a reasonable basis for expecting the
compounds under consideration would be successful for treating
malaria. Id.
Under these circumstances, we also cannot sustain the
examiner’s section 103 rejection of claims 28-33 as being
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