Appeal No. 2002-0941 Page 6
Application No. 09/166,445
We are mindful that there is a line of cases represented by In re
Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971) which indicates
that where an examiner has reason to believe that a functional limitation
asserted to be critical for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of the prior art, the
examiner possesses the authority to require an applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on. Nevertheless, before an applicant can be put to
this burdensome task, the examiner must provide some evidence or
scientific reasoning to establish the reasonableness of the examiner's
belief that the functional limitation is an inherent characteristic of the prior
art. In the case before us, no such evidence or reasoning has been set
forward. [id. at 1789]
The rejection under 35 U.S.C. § 102(e) is reversed.
Section 103(a)
Citing Ex parte Hartop, 139 USPQ 525 (Bd. App. 1962), the examiner apparently
would invoke a per se rule of obviousness, viz., that merely changing the form, purity, or
another characteristic of an old product, the utility remaining the same as that for the
old product, does not render the claimed product patentable. The examiner argues that
(1) crystalline polymorph form I of the compound of formula I illustrated in claim 1 on
appeal is merely a different polymorphic form of the compound disclosed by Andrews
having formula I; (2) crystalline polymorph form I recited in applicants' claims and the
compound disclosed by Andrews having formula I both possess antifungal activity; and
(3) accordingly, the subject matter sought to be patented in claims 1 through 5 would
have been prima facie obvious in view of Andrews. We disagree.
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