Appeal 2007-1817
Application 10/045,510
the teachings of that reference to the claimed invention in order to support
the obviousness conclusion. See B.F. Goodrich, 72 F.3d at 1582, 37
USPQ2d at 1318. This suggestion or motivation may be derived from the
prior art reference itself, O'Farrell, 853 F.3d at 902, 7 USPQ2d at 1680,
from the knowledge of one of ordinary skill in the art, or from the nature of
the problem to be solved. Pro-Mold & Tool Co. v. Great Lakes Plastics,
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996).
Determining whether there is a suggestion or motivation to modify a prior
art reference is one aspect of determining the scope and content of the prior
art, a fact question subsidiary to the ultimate conclusion of obviousness.
With this as background, we analyze the prior art applied by the examiner in
the rejection of the claims on appeal.
The Cited Prior Art: Jerussi
Jerussi is representative of the scope and content of the prior art.3
Jerussi focuses on the preparation of “optically pure derivatives of (+)-
venlafaxine with high purity and in high yield.” (Jerussi, at 3.) Thus,
Jerussi does not further purify racemic venlafaxine (id. at 23), but rather
obtains (+)-venlafaxine as a “colorless solid” with 99.95% purity, using
Appellants’ preferred extraction solvent, ethyl acetate (id. at 24). Jerussi
then uses (+)-venlafaxine to prepare derivatives of venlafaxine. In one
example, describing the preparation of 1-[cyano-4(4-methoxyphenyl)
3 Appellants identify another reference that discloses venlafaxine, U.S.
4,525,186 (Specification 1). Example 33 (col. 20) discloses the resolution of
racemic venlafaxine. Appellants do not distinguish this teaching but merely
state “the ‘186 patent does not describe whether the venlafaxine so obtained
is solid” (Spec. 1). Additionally, we note Wyeth’s commercial product is
prior art to this application.
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