Appeal 2007-1817
Application 10/045,510
have been motivated to purify racemic “pale yellow” venlafaxine with a
reasonable likelihood of success. The same skilled artisan would also have
tried using hexane to do so, given Jerussi’s teachings relating to purifying 1-
[cyano-(4-methoxyphenyl)methyl]cyclohexanol (see Jerussi, at 22: 15-27),
evidencing that hexane is a known extraction solvent. It is error to conclude
that “a patent claim cannot be proved obvious merely by showing that the
combination of elements was ‘obvious to try.’ . . . When there is a design
need or market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp. If this leads
to anticipated success, it is likely the product [is] not of innovation but of
ordinary skill and common sense. In that instance the fact that a
combination was obvious to try might show that it was obvious under §
103.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742, 82 USPQ2d
1385, 1397 (2007) (internal citations omitted).
Further, Appellants have not claimed solvate or polymorph forms of
venlafaxine. Instead, Appellants' claims read generally on any crystalline
venlafaxine. Appellants use similar if not the same reagents for purification
that Jerussi uses. Jerussi extracts the product with ethyl acetate, Appellants’
preferred extractant, and uses hexane to purify a closely related product,
obtaining a "colorless solid." (Jerussi, at 22: 27.)
Further, while Jerussi teaches an embodiment where a pale yellow
solid of venlafaxine is obtained, the reference also teaches an embodiment
where a colorless solid is obtained—one with greater than 99.95% purity
(Jerussi 24: 26-32). Thus, with respect to venlafaxine, the skilled artisan
would have known the pure compound is colorless, not yellow.
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