Appeal No. 2001-1240 Page 2
Application No. 08/374,520
Claims 45-56 stand rejected under 35 U.S.C. § 101 as claiming the same
invention as that of claims 1-34 of U.S. Patent 5,587,489.
Claims 45-56 stand rejected under 35 U.S.C. § 112, first paragraph, “as
being new matter.”
We reverse all of the rejections.
Discussion
The claims are directed to derivatives of baccatin III having specified
reactive groups at particular positions (claims 45-56), or methods of making such
derivatives (claims 29-44). The claimed baccatin III derivatives are useful for
making taxol analogs. Specification, pages 2-3.
1. The double patenting rejections
The examiner rejected the process claims under 35 U.S.C. § 101 as
claiming the same invention as claimed in U.S. Patent 5,399,726. Similarly, he
rejected the product claims as claiming the same invention as claimed in U.S.
Patent 5,587,489. He noted that the disclosures of the two patents are
identical,1 and that both are very similar to that of the instant application.2 With
respect to the process claims, the examiner stated that
[t]he wordings of the patented claims might not be identical to the
wordings of the instant claim[s] on the word-by-word basis, but the
inventive concept and the contents of the inventions would be
deemed identical within the scope of the patent 5,399,726 entitled
to for [sic] patent protection against infringement.
Examiner’s Answer, page 5. With respect to the product claims, the examiner
1 The ‘489 patent is a divisional of the ‘726 patent.
2 The instant application is a continuation-in-part of the ‘726 patent.
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