Appeal No. 97-1843
Application 08/092,574
(d) In claim 6, the various recited amounts “about __% w/v” are not described in
BP’310. Compare BP’310, page 4, line 7, which discloses a composition comprising
specific amounts (e.g., 10 mg) of the components recited in claim 6.
(e) In claim 8, the recited dosage of “from 5 to 100 mg” is not described in BP’310.
Compare BP'310, page 3, lines 11-12, which discloses the dosage from 5 to 50 mg.
Accordingly, it does not appear that appellant is entitled to claim priority under 35
U.S.C. § 119. Thus, it appears that the effective filing date of the subject matter of claims 6
through 9 is, at best, the PCT filing date of Jan. 7, 1986.
(2) Appellant’s statement with respect to the availability of Hansen is unsupported
on the present record. Appellant has not provided any evidence to support his assertion
that Hansen was first available March 10, 1986. More relevant evidence would be a
statement from the publisher of the journal as to the mailing date to all subscribers of the
journal, not just to those in Denmark.
(3) Appellant’s statement that FUCITHALMIC® is “appellant’s assignee’s product
according to the invention” does not appear to remove Hansen as prior art under 35
U.S.C. § 102(a), since Hansen is not a named co-inventor of this application. Further
explanation of appellant’s position is needed.
II. The examiner and appellant should consider whether the marketing of
FUCITHALMIC® has created prior art under 35 U.S.C. §§ 102(a) or 102(b). From the
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