Appeal 2007-0313
Application 10/414,447
LINCK, Administrative Patent Judge, concurring and dissenting.
I concur in the reversal of the rejections under 35 U.S.C. § 112.
However, I respectfully dissent with respect to the rejection under 35 U.S.C.
§ 102(b). The Examiner’s prima facie case of anticipation should be
affirmed.
Appellants are claiming a prior art compound, (S)-N-(1-carboxy-2-
methyl-prop-1-yl)-N-pentanoyl-N-[2’-(1H-tetrazol-5-yl)-biphenyl-4-yl
methyl] amine (“valsartan”1). See Bühlmayer, col. 49 (Example 54)
disclosing a “crystalline form” of this compound. The alleged distinguishing
characteristic is in the form of the crystals, with Appellants claiming their
“Form I” and “Form II” are novel (see, e.g., Specification at 1-2 & claims 1
& 7). They provide very little evidence to show their Forms I and II are
different than the Bühlmayer’s crystalline form, as they have not provided
any comparative physical data for Bühlmayer’s compound. One must ask
why Appellants did not obtain an X-ray powder diffraction pattern or a DSC
thermogram for Bühlmayer’s crystalline compound. I must assume the
results of such a comparison would not support their case.
According to the majority, such data are not needed, since the
“evidence relied on by the Examiner is inadequate to justify shifting the
burden of proof to Appellants” (supra at 6). I disagree. At this point,
Appellants should bear the burden to show they are not claiming something
that is already in the prior art. See, e.g., In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990) (“when the PTO shows a sound basis
1 Valsartan is a commercial product sold by Novartis under the trade name
Diovan (approved by the FDA in 2001).
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