Appeal No. 2000-0599
Application No. 08/357,363
According to the examiner, claims 59 and 60 lack descriptive support in the
specification as Athe crystalline material [is described] only in the 275-277EC melting
point form, not in the 90% or 95% pure form@ and A[t]here is no evidence that the 275-
277EC melting point form corresponds to either of these.@ Answer, 20th page. The
examiner concedes that Aif appellants actually showed that the 275-277EC melting point
form was inherently that pure, the rejection [would] vanish,@ but maintains that the
Jarvest 3 declaration is inconclusive on this point because Ait is not known whether this
was in fact a crystalline form that was being analyzed@ as Aneither Jarvest=s declaration
nor the original text for example 4 state that the product actually is crystalline@ and
Arecrystallization attempts do not always give crystalline products.@ Id. Appellants,
however, point out that Athe original text of Example 4 does not state that
recrystallization >was attempted,= but that the product >was recrystallized.=@ Brief, pages
15-16. We agree with appellants that the continued rejection of claims 59 and 60 on
this basis is in error.
The examiner argues that claims 61, directed to Aa pharmaceutically acceptable
salt of Penciclovir without any purity limitation at all,@ lacks written descriptive support
because Athe language appears in the two earlier of the three priority documents ([but]
not in the third)@ and that A[l]egally, this is not sufficient[,] [d]escription must be found in
the specification.@ Answer, 19th page. We find this argument to be without merit - we
know of no authority, and the examiner cites none, that requires an ipsis verbis
disclosure to satisfy the written description requirement.
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