Prior Art as a Whole Must Be Considered for TSM Tests

The CAFC also commented on the absence of a reasonable expectation of success. In this particular instant, the CAFC rejected Danbury s reasoning that an expectation of success merely required an expectation of minimal activity. Rather, the CAFC held that the success of discovering famotidine was not the expectation of discovering one of the tens of thousands of compounds that exhibit baseline H2 antagonist activity but was the finding of a compound that had high activity, few side effects, and lacked toxicity.  

Another manner of considering the prior art for all that it might teach asks that we consider how the motivation of a PHOSITA would be affected if the proposed modification or combination would destroy or hinder the operability of what was intended in the reference. For example, consider the following hypothetical example. 

The cited prior art reference discloses that the compounds of formula II have significant cytotoxic and anticancer activity, which is attributed to the nitrogen mustard moiety since the reference also discloses that hydroxyl groups in the place of the 

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