Appeal No. 2001-0983 Page 4
Application No. 08/954,946
specification.” In re Sneed, 710 F.2d 1544,1548, 218 USPQ 385, 388 (Fed. Cir.
1983).
2. The rejection of record
The examiner rejected claims 18-20 as obvious over the Merck Index,
based on the following reasoning, quoted in its entirety:
Claim 18-20 are rejected under 35 U.S.C. 103(a) as being
unpatentable over the Merck Index.
The Merck Index teaches the use of the claimed compound,
phenoxyacetic acid in a pharmaceutical formulation with fungicidal
activity. The above reference makes clear that the claimed
composition is old and well known. To use an old composition for a
new purpose does not create a patentably distinct composition.
Applicant has presented no evidence to establish the unexpected
or unobvious nature of the claimed composition, and as such,
claims 18-20 are properly rejected under 35 U.S.C. 103.
Examiner’s Answer, pages 2-3.
The examiner’s explanation of this rejection does not permit meaningful
review on our part. First, it is unclear what claim construction the examiner is
applying. At one point, the examiner refers to the “claimed compound,
phenoxyacetic acid,” but at another point refers to the “claimed composition.”
Thus, it is unclear whether the claims are rejected as reading on the purified
phenoxyacetic acid disclosed by the Merck Index, or rather are rejected over the
fungicidal composition alluded to therein.
Second, a rejection under 35 U.S.C. § 103 presupposes some difference
between what is disclosed in the prior art and what is claimed; if there is no
difference, the rejection should be for anticipation under 35 U.S.C. § 102. Here,
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007