Appeal No. 2000-1024 Page 10
Application No. 08/379,551
rejection that the patent was obtained because the compounds were shown to
have antiviral activity.
While PMPA may be encompassed by the group of structures claimed in
the Holy (US) patent, that is not dispositive of the issue of whether PMPA has
antiviral activity. A claim may encompass inoperative embodiments and still
meet the enablement requirement of 35 U.S.C. § 112, first paragraph. See Atlas
Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ
409, 413 (Fed. Cir. 1984), In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214,
218 (CCPA 1976).
In Table 1 of the Holy (US) patent, specifically referred to by the examiner
in rejecting the claims at issue, see Examiner’s Answer, page 4, certain chemical
characteristics are given for compound 2, i.e., PMPA, but the table does not set
forth any biological data. The disclosure of Holy relied upon by the examiner as
stating that PMPA has biological activity, i.e., column 4, lines 14-19 of the Holy
(US) patent, also does not support the examiner’s position. That portion of the
patent states:
Some compounds of the general formula I which are the subject of
this invention, are important active components of antiviral drugs.
An example of such compound is 9-phosphonylmethoxyethyladenine
which exhibits a specific activity against DNA-viruses and Maloney
sarcoma (PV 3018-85).
(Emphasis added). Thus, the patent does not assert that all of the compounds
have antiviral activity, but that some of the compounds may have antiviral
activity. When the disclosure of Holy (US) is read in conjunction with the
teachings of DeClercq and Holy (1989), which specifically address PMPA,
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007