Appeal No. 2003-1199 Page 5
Application No. 09/125,329
On consideration of the record, including the above-listed materials, we reverse
each of the examiner's rejections.
Discussion
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. See Ex parte Hartop, 139 USPQ 525, 527 (Bd. App. 1962). The examiner
argues that (1) crystal modifications A and A' of 1-(2,6-difluorobenzyl)-1H-1,2,3-triazole-
4-carboxamide, recited in the appealed claims, are merely different polymorphic forms
of the compound disclosed by Meier '262 in Example 4 or by Meier '680 in Example 35;
(2) crystal modifications A and A' recited in applicants' claims and the compound
disclosed by Meier '262 or Meier '680 process antiepileptic activity; and (3) accordingly,
the subject matter sought to be patented would have been prima facie obvious. We
1(...continued)
results for the instant crystals vis-a-viz the known compound. [Paper
No. 16, paragraph bridging pages 5 and 6].
On these facts, as best we can judge, both exhibits have been admitted. According to
the examiner, however, Document 1 is not entitled to any weight ("the exhibit has not
been considered") because applicants did not provide an English translation; and
Document 2 is insufficient to rebut the prima facie case of obviousness.
We find it sufficient to note, for reasons presented more fully in the text, that the
examiner has not established a prima facie case of obviousness or obviousness-type
double patenting. Accordingly, applicants need not rely on the proffered exhibits to
rebut any such prima facie case. In the future, we recommend that the examiner be
more clear in stating whether exhibits proffered after final rejection have been admitted
in the record.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007