presented objective evidence wherein the claimed sodium salt of (6S)-folinic acid has
been demonstrated to be unobvious over the corresponding calcium salt. See Brief,
pages 3 and 4. We agree. We find the evidence submitted by appellants in the
Declarations of Hans Mueller to be dispositive of the issues before us.
As a rebuttal to the prima facie case of obviousness, two Declarations by
Mueller are submitted. The declarations compare the sodium salt of folinic acid with
the calcium salt of folinic acid with respect to their stability over a period of time. In
the experiment conducted in the declaration, a marker known only as NP-8, a
degradation product of the folinic acid salts, is measured over a period of time.
Declarant finds that the increase in the NP-8 content for calcium folinate is three
times greater than for sodium folinate. Accordingly, the sodium salt of (6S)-folinic
acid has a stability about three times higher than that of the calcium salt. See Brief,
page 4, and Declaration of Mueller executed August 9, 1995, page 3.
The examiner’s principal objection to the data is that the specification makes no
explicit or implicit mention of the property relied on for patentability. Hence,
according to the examiner, its consideration is barred as the basic property or utility
must be disclosed by appellants in order for affidavit evidence of unexpected
properties to be offered. See In re Davies, 475 F.2d 667, 670, 177 USPQ 381,
385 (CCPA 1973). See Answer, page 2. Furthermore, the examiner argues that NP-
8 has no biochemical significance. See Answer, page 6. However, where the unusual
or unexpected results inherently flow from the indicated use of the compound, the
property must be considered in determining the patentability of the claimed compound.
See In re Zenitz, 333 F.2d 924, 927-928, 142 USPQ 158, 161 (CCPA 1964); and
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