Ex Parte 5518625 et al - Page 13

                Appeal  2007-0711                                                                              
                Reexamination 90/006,706                                                                       
                fall victim to the insidious effect of a hindsight syndrome wherein that                       
                which only the inventor taught is used against its teacher.”  In re Fine, 837                  
                F.2d at 1075, 5 USPQ2d at 1600, quoting from W.L. Gore & Assoc. v.                             
                Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), at 1553, 220                      
                USPQ at 312-13.                                                                                
                      To establish the obviousness of the subject matter claimed, all the                      
                claim limitations must be taught or suggested by the prior art.  In re Royka,                  
                490 F.2d 981, 985, 180 USPQ 580, 583 (CCPA 1974).  Applicants’ claims                          
                are directed to an improvement in conventional simulated moving bed                            
                chromatography (SMBC) processes whereby:  (1) the effect of a plurality of                     
                achiral liquid mobile phase compositions on at least one of k’, solubility, and                
                selectivity is compared; and (2) one of the plurality of achiral liquid mobile                 
                phase compositions compared in (1) is selected for use as the achiral liquid                   
                mobile composition in the conventional SMBC process for separating chiral                      
                isomers from an enantiomeric mixture which has a retention capacity (k’) for                   
                a chiral isomer to be separated such that 0.1<k’<1.0 (Br. App. A).  Thus, to                   
                affirm the Examiner’s final rejection in this case, we must find that the prior                
                art describes each of the specified steps of the process Appellants claim and                  
                would have suggested a combination of those steps in the SMBC process                          
                Appellants claim to a person having ordinary skill in the art.                                 
                      We conclude first that Appellants’ claims are directed to processes for                  
                the separation of at least one chiral isomer from any enantiomeric mixture of                  
                chiral organic compounds by SMBC using an achiral liquid mobile phase                          
                composition having a retention capacity (k’) for a chiral isomer to be                         
                separated such that 0.1<k’<1.0.  Accordingly, Appellants’ claims are                           
                directed to a process for the separation of at least one chiral isomer from an                 

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