Appeal 2007-1821
Application 11/040,964
would have been obvious to the skilled artisan in the art at the
time of the present invention. The skilled artisan would be
motivated to obtain a compound having high purity, including a
99% purity, in order to eliminate or reduce adverse effects that
might be due to the presence of impurities.
(Answer 4-5.)
Appellants contend:
Cook et al. fails to identify or suggest to those of ordinary skill
in the art a crystallization step as a route to obtaining improved
parenteral activity. There is no connection or pointer in the
reference between parenteral activity and crystallinity.
Obviousness cannot be predicated on what is unknown.
Motivation to purify cannot suggest a method for obtaining
long-acting parenteral activity.
(Br. 8.)
We agree with the Examiner.
The question is not whether the combination was obvious to the
patentee but whether the combination was obvious to a person
with ordinary skill in the art. Under the correct analysis, any
need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.
KSR, 82 USPQ2d at 1397. Thus, obviousness does not require that the
Examiner find a teaching in the prior art that crystallization was known to
improve parenteral activity as demanded by Appellants. Rather, any reason
to accomplish crystallization is sufficient to establish obviousness of the
claimed subject matter. Here, the Examiner has provided a sound reason for
crystallizing the claimed compound: to have a compound of high purity in
order to eliminate or reduce adverse effects. Appellants have not identified
any flaw in this reasoning, and we find none. Instead, Appellants argue that
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