Appeal No. 1996-2910
Application 07/825,488
Inasmuch as the rejections under 35 U.S.C. §§ 102 (a) and (b) were entered and
withdrawn without meaningful explanation from the examiner, it is unclear on the record
(1) whether independent claim 25 was evaluated under the appropriate legal standards;
or (2) whether the scope of independent claim 26 was properly interpreted.
(1) Claim 25 is directed to a composition consisting essentially of the RSSS
stereoisomer of ","’-[iminobismethylene]bis[6-fluoro-3,4-dihydro-2H-1-benzopyran-2-
methanol] or a pharmaceutically acceptable acid addition salt thereof. Van Lommen
discloses compound 84, which has a bilaterally symmetrical structure identical to the
compound of claim 25, but has the isomeric designation “AB” (column 21). As
explained in the paragraph bridging columns 4 and 5 of Van Lommen, “A” and “B”
specify the stereochemical configuration at the compound’s four chiral centers.
Because “A” corresponds to the RS or SR configuration, and “B” corresponds to the SS
or RR configuration, the “AB” designation indicates that compound 84 is an unresolved
mixture of four stereoisomers: RSSS, SRRR, RSRR and SRSS. Appellants’ argument
at pages 7 through 9 of the Brief is consistent with this. Moreover, at column 4, lines
40-58, Van Lommen states that “[p]ure stereochemically isomeric forms of the
compounds . . . may be obtained by the application of art-known procedures” and “are
naturally intended to be embraced within the scope of the invention.”
As stated in In re Schaumann, 572 F.2d 312, 315, 197 USPQ 5, 8 (CCPA 1978),
a “fundamental question presented by this appeal is whether the disclosure of a
chemical genus may ever constitute a description of a specific compound falling within
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