Appeal No. 1998-2587
Application No. 08/451,993
3. The rejection for obviousness-type double patenting.
The examiner provisionally rejected instant claim 25 on the basis that it is
not patentably distinct from claim 1 of co-pending application 08/501,933. Instant
claim 25 is directed to a specific hexacyclic compound “or a salt thereof.” Claim
25 does not specify the stereochemistry of the claimed compound at the 1
carbon.
Claim 1 of the ‘933 application is directed to the methanesulfonate salt of
the (1S) stereoisomer of the same compound. The examiner reasoned that the
methanesulfonate salt is an obvious species because it is mentioned in the
instant specification as a potentially useful salt, and that isolating the (1S)
stereoisomer would have been obvious because “the U.S. F.D.A. has been
encouraging the clearance of specific isomer, [so] resolving and choosing the
more active isomer would be obvious.” Examiner’s Answer, page 16.
“Obviousness-type double patenting . . . requires rejection of an
application claim when the claimed subject matter is not patentably distinct from
the subject matter claimed in a commonly owned patent. Its purpose is to
prevent an unjustified extension of the term of the right to exclude granted by a
patent by allowing a second patent claiming an obvious variant of the same
invention to issue to the same owner later.” In re Berg, 140 F.3d 1428, 1431,
46 USPQ2d 1226, 1229 (Fed. Cir. 1998).
The examiner has not established that claim 1 of the ‘993 application and
instant claim 25 are not patentably distinct. The examiner has pointed to nothing
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