Appeal No. 2000-0091
Application No. 08/732,254
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993).
The examiner’s obviousness rejection seems to suffer the same infirmity
as her anticipation rejection, namely, that it is directed to delavirdine mesylate
per se, rather than to the specific S and T crystal forms of delavirdine mesylate
that are the subject of the claims on appeal. The examiner has provided no
evidence or convincing reasoning why the prior art disclosure of delavirdine
mesylate in an undefined state would have suggested the specific S and T
crystal forms that are the subject of the instant claims.
Nor has the examiner established that Palmer would have enabled those
skilled in the art to make the claimed S and T crystal forms of delavirdine
mesylate. Appellants’ specification discloses specific conditions for
recrystallizing delavirdine mesylate that produce the S and T crystal forms. See
pages 2-4 and Examples 1-8. Palmer does not disclose or suggest even the
existence of the S and T crystal forms of delavirdine mesylate, let alone how to
make them. As stated in In re Hoeksema:
[I]f the prior art of record fails to disclose or render obvious a
method for making a claimed compound, at the time the invention
was made, it may not be legally concluded that the compound itself
is in the possession of the public. In this context, we say that the
absence of a known or obvious process for making the claimed
compounds overcomes a presumption that the compounds are
obvious, based on close relationships between their structures and
those of prior art compounds.
399 F.2d 269, 274, 158 USPQ 596, 601 (CCPA 1968) (footnote omitted).
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