Appeal No. 2002-0941 Page 5
Application No. 09/166,445
As stated in the specification, page 2, second paragraph, applicants have
discovered that the compound of formula I can exist in the form of three crystalline
polymorphs, each distinctly different from each other and from the amorphous form.
These crystalline polymorphs are referred to in the specification as Form I, Form II, and
Form III and, according to applicants, Form I is the most stable.
The examiner does not deny that applicants' specification teaches any person
skilled in the art how to make crystalline polymorph form I of the compound of formula I
illustrated in claim 1 on appeal. Nor can the examiner point to any passage in Andrews
disclosing applicants' method for making crystalline polymorph form I, or establishing a
reasonable basis for concluding that the prior art compound disclosed by Andrews
meets all the limitations of the claims. On the contrary, the examiner acknowledges
that "Andrews is silent to [sic] as to nature of crystalline form produced" (Paper No. 18,
page 4, first full paragraph).
On these facts, the examiner is not in a position to invoke the principles
enunciated in In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596-97 (CCPA 1980);
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977); and In re
Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971). Rather, the facts
here more closely resemble those presented to another merits panel of this board in Ex
parte Skinner, 2 USPQ2d 1788 (Bd. Pat. App. & Int. 1986). As stated by the board in
Skinner:
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