Appeal No. 2001-1020 Page ~PAGE ~3~
Application No. 09/063,524
The examiner rejected all of the claims as anticipated by either the PDR or
Goodman & Gilman. Her reasoning was that
[b]oth references teach Premarin and its estrogenic properties. . . .
As indicated on page 1, lines 8-9 of the present specification, 3β-
hydroxy-5,7,9-estratriene-17-one 3-sulfate ester sodium salt is a
component of Premarin. Therefore, the compound and
composition recited by the instant claims are encompassed by the
prior art composition.
Examiner’s Answer, page 3. The examiner also cited Ex parte Reed, 135 USPQ
34 (POBA 1962), as establishing the rule that “a substance merely extracted
from its parent material[,] even if in purer form,” is unpatentable unless it
possesses a utility different from the parent material and not evident from the art.
See the Examiner’s Answer, page 3. The examiner concluded that that test was
not met in this case and “[t]herefore, the compound as claimed is not patentable.”
Id.
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d
1051, 1053 (Fed. Cir. 1987). If a claimed composition is the same as a known
composition, claim limitations setting out inherent properties will not distinguish
the claim from the prior art. See In re Pearson, 494 F.2d 1399, 1402, 181 USPQ
641, 644 (CCPA 1974) (“[T]erms [that] merely set forth the intended use for, or a
property inherent in, an otherwise old composition . . . do not differentiate the
claimed composition from those known in the prior art.”). However, the initial
burden is on the examiner to establish that all of the limitations of the claims are
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