Ex parte MELLO et al. - Page 10

          Appeal No. 95-2655                                                          
          Application 07/912,029                                                      

          the present invention, with Amvisc and Healon, two                          
          commercially available hyaluronate-containing compositions                  
          that include no magnesium ions.                                             
               The examiner notes that the comparison in the Declaration              
          is with compositions that contain no magnesium ions but the                 
          prior art used in the rejection “clearly contains magnesium”                
          (answer, pages 5-6).  The examiner further states that                      
          “[A]ppellant has presented no evidence to establish the                     
          criticality of the concentrations used by the present                       
          application over the prior art of record” (answer, page 6).                 
               A Rule 132 affidavit (or declaration), to be effective,                
          must compare the claimed subject matter with the closest prior              
          art.  In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71                   
          (CCPA 1979).  We agree with the examiner that the Amvisc and                
          Healon compositions, which do not contain “significant                      
          concentrations” of calcium or magnesium ions (see page 2 of                 
          the Mello Declaration), are not the closest prior art.                      
          Yamamoto contains magnesium and calcium ions in similar                     
          concentrations and is the closest prior art of record.                      
          Furthermore, it is not clear if the claimed subject matter was              


Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  Next 

Last modified: November 3, 2007