Appeal No. 2001-1020 Page ~PAGE ~5~
Application No. 09/063,524
1970): “[B]y definition, pure materials necessarily differ from less pure or impure
materials and, if the latter are the only ones existing and available as a standard
of reference, as seems to be the situation here, perforce the ‘pure’ materials are
‘new’ with respect to them” (footnote omitted, emphasis in original). See also
Genentech Inc. v. Wellcome Foundation Ltd., 29 F.3d 1555, 1562, 31 USPQ2d
1161, 1166 (Fed. Cir. 1994) (claims to an enzyme preparation recited a particular
specific activity; the court called the specific activity limitation “the critical
distinction of those claims over the less purified materials constituting the
relevant prior art.”).
Summary
The examiner has not shown the claimed compounds or compositions to
be identically disclosed in the prior art. Therefore, the rejection under 35 U.S.C.
§ 102(b) is reversed.
REVERSED
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Toni R. Scheiner )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )
EG/dym
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