Appeal No. 1995-3047
Application No. 07/805,729
The rejection of claims 22 through 24 under 35 U.S.C. § 112, first and second
paragraphs, is reversed.
Each § 103 rejection presents the same question, namely, whether the particular
salt forms of d4T, ddI and F-ddI recited in the appealed claims would have been obvious in
view of the parent compounds d4T, ddI and F-ddI. We answer that question in the
negative.
As can be seen from a review of appellants' claims, each salt contains 0.5 to 2.0
moles of water and variable X (appellants' terminology) is an alkali or alkaline earth metal
ion, an ammonium ion, or a quaternary amino ion. According to the examiner, the cited
prior art discloses parent compounds d4T, ddI and F-ddI, but does not disclose salt forms
of those parent compounds. Nor does the examiner rely on "secondary" art to make up
this difference. Rather, the examiner relies on Ex parte Matheson, 92 USPQ 255 (P. O.
Bd. of Appeals 1951) for its discussion of "the question of patentability of salts of known
compounds". See the Examiner's Answer, page 9, lines 5 through 13; page 10, lines 16
through 24; and page 11, lines 17 through 25.
The examiner's reliance on Ex parte Matheson is misplaced. In Matheson, the
examiner rejected claims drawn to the copper, zinc and iron salts of tetra-isobutyl phenol
sulfonic acid "as not patentably distinguishing" over the sodium salt of that same acid
disclosed in the prior art. The Board of Appeals reversed the examiner's decision, holding
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