Appeal No. 2000-2156 Page 2
Application No. 08/431,727
species that also elicits such particular therapeutic response, but which activated drug
species will in vivo metabolically cleave into said identified inactive metabolite moiety
and other nontoxic moieties thereof.
The Prior Art Reference
In the statement of rejection under 35 U.S. C. § 103, the examiner includes the
following prior art reference:
Bodor 3,884,905 May 20, 1975
We also note the examiner’s reference to Design of Prodrugs (Bundgaard, H.,
Ed.), Elsevier Sci. Pub. B.V. (Biomedical Division), Chapter 11, “Prodrugs versus soft
drugs,” pp. 333-54 (1985), authored by the inventor, Nicholas Bodor. According to the
examiner, the rejection under 35 U.S. C. § 103 is “bolstered” by that publication (Final
Rejection, Paper No. 43, page 5, last paragraph). Further, in responding to applicant’s
arguments with respect to rejections under 35 U.S. C. § 112, the examiner repeatedly
refers to U.S. Patent No. 5,760,216 issued June 2, 1998, to Chorghade et al.
(Examiner’s Answer, Paper No. 50, section (11) entitled “Response to Argument”).
According to the examiner, “[t]he Chorghade et al. patent is cited as an ancillary
reference, to establish a fact” (Paper No. 50, page 5, lines 13 and 14). The examiner
has not established, however, that either Chapter 11, “Prodrugs versus soft
drugs,” or U.S. Patent No. 5,760,216, constitutes legally available prior art in this case;
or that either reference may be relied on to establish facts known to a person having
ordinary skill in the art at the time the invention was made. In any event, neither of
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