Appeal No. 2000-0599
Application No. 08/357,363
Accordingly, the rejection of claims 33, 59, 60 and 61 under 35 U.S.C. ' 112, first
paragraph, is reversed.
III. Anticipation by Pandit
Claims 32, 33 and 45 stand rejected under 35 U.S.C. ' 102(b) as anticipated by
Pandit, even though the examiner concedes that APandit has a disclosure of Penciclovir
in a form less pure than here, with more and different impurities.@ Answer, 20th page.
With respect to claim 45, the examiner argues that Athe purity limitation
>substantially pure form= . . . is indefinite, and so could be broad enough to embrace the
material of Pandit.@ Answer, 21st page. Inasmuch as there is no dispute that Pandit
describes a material that is only 45-50% penciclovir by weight, and we have found that
the term Asubstantially pure form@ is not indefinite, but would be understood by one
skilled in the art to require a level of purity more stringent than Amore than 95% by
weight of pure compound,@ Pandit cannot be said to anticipate the invention of claim 45.
With respect to claims 32 and 33, the examiner argues that these claims Ahave
no purity limitation,@ inasmuch as the spectroscopic data recited in the claims merely
reflect intrinsic properties of penciclovir and have nothing to do with purity. Thus, Asince
it is Penciclovir here and Penciclovir in Pandit, the same spectroscopic properties are
present.@ Answer, 20th page. For the reasons given above (in the discussion of the
rejection of claims 32 and 33 on the ground of indefiniteness), we agree with the
examiner that the spectroscopic data in claim 32 reflects Aintrinsic properties@ of 9-(4-
hydroxy-3-hydroxymethylbut-1-yl) guanine (penciclovir), and does not reflect either the
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007