Appeal No. 1998-1489
Application No. 08/449,224
presumption these acids were neither obvious nor known. The ‘417 and ‘249
patents [Dappen ‘417 and Dappen ‘249] evidence undue experimentation … was
required to obtain these materials. Dappen ‘249 generically claims the acid
intermediate where X is O based partly on an application filed Feb. 24, 1993,
also before appellants’ parent filing date. The acid compounds where X is O are
also prima facie novel and unobvious. (Examiner’s Answer, paragraph bridging
pages 4 and 5).
Based on the Dappen patents, the examiner concludes that “key intermediates, starting
materials for instantly claimed products were not in fact available” (Examiner’s Answer,
Page 5, last paragraph). The examiner cites In re Howarth, 654 F.2d 103, 210 USPQ
689 (CCPA 1981), as “in point” without further comment or analysis (Examiner’s
Answer, paragraph bridging pages 5 and 6).
In Howarth, the issue centered on the availability of a starting material, clavulanic
acid, essential to making the claimed derivatives of clavulanic acid. Howarth’s
specification provided no information enabling persons skilled in the art to prepare
clavulanic acid, or directing them to reference materials containing such information.
Nevertheless, Howarth relied on copies of patent specifications, which had been open
for inspection in Rhodesia, Panama, and Luxemburg before his U.S. filing date, as
describing the preparation of clavulanic acid. The solicitor replied that
Regardless of what the documents are called and regardless of the technical
possibility of obtaining copies from the respective government offices, there is no
evidence of actual dissemination to the public of the documents containing the
specifications, nor is there any index, catalog or other customary research tool or
even a descriptive title that would lead one of ordinary skill to the documents for
information on the preparation of clavulanic acid. Therefore, the documents may
not be relied on to supplement appellant’s disclosure [In re Howarth, 654 F.2d at
105, 210 USPQ at 691].
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007