Appeal No. 2000-0091
Application No. 08/732,254
evidence showing otherwise, either of the instant claims may be the same
compound recited in US‘142.” Id.
“35 U.S.C. § 101 prevents two patents from issuing on the same
invention. . . . A good test, and probably the only objective test, for ‘same
invention,’ is whether one of the claims could be literally infringed without literally
infringing the other. If it could be, the claims do not define identically the same
invention. . . . If it is determined that the same invention is being claimed twice,
35 U.S.C. § 101 forbids the grant of the second patent.” In re Vogel, 422 F.2d
438, 441, 164 USPQ 619, 621-22 (CCPA 1970).
Here, the patent’s claim 11 is directed to delavirdine mesylate, without
limitation as to crystal form. Instant claims 1 and 2 are directed to delavirdine
mesylate in the S and T crystal forms, respectively. Thus, delavirdine mesylate
in any crystal form other than S or T, or in a noncrystalline form, would infringe
Palmer’s claim 11 without infringing either of the claims on appeal. Therefore,
the claims on appeal are not directed to the “same invention” as Palmer’s claim
11 and are not unpatentable on that basis. The rejection under 35 U.S.C. § 101
is reversed.
2. Anticipation
The examiner rejected the claims under 35 U.S.C. § 102(e) on the basis
that “Palmer discloses by name the same chemical compound as the mono
methanesulfonate salt. See claim 11 in the US patent. In view of this fact
evidence is needed that the prior art compound inherently lacks the
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