Appeal No. 2001-1240 Page 4
Application No. 08/374,520
“hydrogen, alkyl, alkenyl, alkynyl, aryl, or heteroaryl, hydroxy, protected hydroxy,
or together with R1 forms a carbonate.” In the structures shown in the claims of
the ‘726 and ‘449 patents, by contrast, the positions corresponding to R14 and
R14a can only be hydrogens.
Thus, a baccatin III derivative having an alkyl group at positions R14 and
R14a, or a method of making such a derivative, would infringe the instantly
pending claims without infringing the claims of the ‘726 and ‘449 patents. This
single difference, while not the only difference between the pending and patented
claims, is enough in itself to defeat a rejection for “same invention” double
patenting. The rejections under 35 U.S.C. § 101 are reversed.
2. The “new matter” rejection
The examiner rejected product claims 45-56 under 35 U.S.C. § 112, first
paragraph, as “being new matter.” Examiner’s Answer, page 4. He explained
that “[t]he scope of the claims 45 to 56 is broader than the scope of the original
claims which required additional search and/or consideration.” Id. Later in the
Examiner’s Answer, the examiner elaborated on the prosecution history of claims
45-56:
Prior to the first Office action, the compound claims are claims 5 to
8, 25 to 28 with a certain scope. After the first Office action,
appellants canceled claims 5 to 8, 25 to 28 and replaced them with
the instant claims 45 to 56 (on appeal) with a scope broader than
the scope of the original claims 5 to 8 and 25 to 28. The new
claims embody various species which are not enabled by the
specification such as R6 and R6a are not hydrogen; R7, R7a, R9, R9a,
R10, R10a are hydrogen; R14 and R14a are not hydroxy.
Page 6.
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