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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