Appeal No. 2001-1947
Application 08/333,202
the claimed subject matter to a person of ordinary skill in the art. In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993). An obviousness analysis requires
that the prior art both suggest the claimed subject matter and reveal a reasonable
expectation of success to one reasonably skilled in the art. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1993).
It is the examiner=s position that (Answer, page 4):
The claims are product-by-process claims drawn to the compound
diacetylrhein. . . . Friedmann teaches the compound diacetylrhein and its
use for the treatment of arthritis. . . . The compound taught by Friedmann
would inherently be substantially pure, essentially free from aloe-emodin
derivatives.
According to the examiner, “[t]here is no apparent difference in the com- pounds.
. . . To the extent that the purity of the compound of the reference and that of
the claims differ, the claims are rejected under 35 U.S.C. ' 103(a)” (Answer, page 4) .
Merck also teaches the compound diacetylrhein and its use as an antirheumatic. The
examiner argues there is no apparent difference between the claimed compound and
the Merck compound. Id.
With respect to claim 22, the examiner finds that the composition of claim 22
reads on a water solution of the diacetylrhein compound, citing Friedmann, column 8,
lines 35 and 54 and Merck Index, Abstract 8072, page 1179. Answer, page 4.
4
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