Appeal No. 2001-0980
Application 08/953,146
As explained above, the examiner relied upon a Chemical Abstracts citation of
Sumitomo. For reasons unclear from the record, the examiner did not obtain a full text
copy of the Japanese patent document as well as a translation thereof. Obviousness
determinations under 35 U.S.C. § 103 are fact intensive. It is common sense that a full
text document will contain more facts than an abstract of the document. Why the
examiner would spend the agency’s resources as well as those of appellants in
pursuing patentability inquiries based upon a less than complete set of facts is not clear.
Our review of the translation makes clear that the examiner’s conclusions reached from
considering the abstract are incorrect.
The Sumitomo invention is directed to a pharmaceutical composition which
contains interferon and thimerosal. As explained by Sumitomo, it can be difficult to
preserve protein such as interferon since some of the normal preservatives including
parabens, phenols, and alcohols have a protein denaturing effect. The Sumitomo
document discloses that thimerosal is able to preserve an interferon composition
without exerting a negative influence on the stability of the protein.
Sumitomo does discuss the use of methyparaben, propylparaben, and benzyl
alcohol as preservatives for interferon. However, in reading the full text translation of
the document, it is clear that that discussion is premised upon their use in the
alternative, not the conjunctive as urged by the examiner. As explained at page 3 of the
translation, an interferon solution was formed having a specified strength to which
thimerosal, benzyl alcohol, and a mixture of methyl and propylparaben respectively
were added as preservatives. As seen from Table I of the document, four separate
interferon compositions were formed and tested. The first had no preservative, the
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