Appeal 2007-1817
Application 10/045,510
The Examiner further found that one of ordinary skill in the art would
correlate the compound color with the purity of the compound and that an
"ordinary skilled artisan generally would expect pure compounds to be
white." (Id.) The Examiner argued the corollary that compounds with
impurities have color. (Answer 3.) The Examiner concludes "it would have
been obvious to one having ordinary skill in the art at the time [the]
application was made to have used well-known techniques of purification, in
order to make a very pure compound of venlafaxine to eliminate the
possibility of side effects that might be associated with the impurities." 2 (Id.
at 3-4.)
Appellants contend that the Examiner erroneously equates color and
general purity and argues that crystallinity alone may dictate a compound's
color. (Br. 8-10.) Appellants argue they do not claim "venlafaxine of a
different purity." (Br. 10.) Rather, they argue their claimed compound
differs “in both color and crystallinity.” (Br. 4.)
In appropriate circumstances, a single prior art reference can render a
claim obvious. See, e.g., B.F. Goodrich Co. v. Aircraft Braking Sys. Corp.,
72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996); In re
O'Farrell, 853 F.2d 894, 902, 7 USPQ2d 1673, 1680 (Fed. Cir. 1988).
However, there must be a showing of a suggestion or motivation to modify
2 Hawley's Condensed Chemical Dictionary, 12th ed., Van Nostrand
Reinhold Company, New York, New York, p. 977 (1993), defines
"purification" as "[r]emoval of extraneous materials (impurities) from a
substance or mixture…Though absolute purity is impossible to attain, a
number of standard procedures exist for approaching it to the extent of 1
ppm of impurity or less. The following fractionation techniques are used:
crystallization, precipitation, distillation, adsorption (various types of
chromatography), extraction, electrophoresis and thermal diffusion.
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