Appeal 2007-1817
Application 10/045,510
We agree with the Examiner's position that one of ordinary skill in the
pharmaceutical arts would be highly motivated to obtain the purest form of a
compound possible when it is used for medicinal purposes. (Answer 9.)
Further, one of ordinary skill in the art would have been motivated to use
known purification techniques, such as those disclosed in Jerussi and known
to those skilled in the art, to obtain purer crystalline forms of venlafaxine.
Therefore, when filtered though the knowledge of one skilled in the art of
purification of chemical compounds, we find Jerussi would have rendered
obvious, if not anticipated, the claimed crystalline venlafaxine compound.
Given the above, the subject matter of claims 1 and 2 would have
been obvious to one of ordinary skill in the art at the time of Appellants’
invention, absent evidence of unexpected results due to the alleged
differences.
Claims 95-98: The Product by Process Claims
Claims 95-98 are product by process claims to a “[w]hite crystalline
solid venlafaxine base.” The Examiner takes the position the “determination
of patentability is based on the product itself” and does not depend on its
method of production.” (Answer 4 (quoting In re Thorpe, 777 F.2d 695, 698
227 USPQ 964, 966 (Fed. Cir. 1985).)
We agree with the Examiner and thus conclude these claims would
have been obvious for the reasons given regarding claims 1 and 2, absent
some showing of unexpected results.5
5 Further, Jerussi’s 99.95% pure, colorless (+)-venlafaxine appears to
be of the same or greater purity as Appellants. Thus, an alternative rejection
9
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