Purified Forms of Compounds or Materials

From our earlier discussions on novelty, you will recall that a claim could be anticipated if and only if each and every element was present in a prior art reference. Some of the earlier claim examples we analyzed included claims to compounds where the 

The second consideration asks if one of ordinary skill in the art would have been able to carry out the purification even if they were motivated to do so. Remember that obviousness also requires that the prior art provide not only the motivation to make the later claimed invention but also a likelihood that one of ordinary skill in the art would have been successful in doing so. Isolation of complex and/or sensitive materials can be very difficult and the outcome not at all certain. Thus very often a wish to make something happen is a far cry from being able to make it happen, and the art must be able to provide both the wish and the means to make that wish come true. 

129In this context, small molecule compound simply refers to a nonprotein or nonbiopolymeric material, though the subject matter also can be seen as applying to naturally occurring proteins, gene sequences, etc. 

130Contrast these with In re Antonie, 559F.2d618 (CCPA 1977), where the claimed variable (0.12 gal./ft.2) was not art appreciated and could only have been arrived on somewhat inadvertently. 

Our next case, In re Kratz, provides an opportunity to examine the obviousness inquiry as it relates to an applicant s claimed invention directed to compositions containing a compound already found in the natural state.131 This case focuses on the purification of compounds responsible for the flavor of strawberries and arose from a reissue application (reissue of U.S. 3,499,769, ultimately reissued as Re. 30,363). The appealed claims of interest are shown below. 

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