Appeal No. 2001-1947
Application 08/333,202
claimed purity. In our view, this evidence has been insufficiently rebutted by the
examiner.
In our view, and consistent with legal precedent, a compound in purer or modified
form may, if unobvious in that form, be patentable over the same compound as it
existed in the prior art but the claims thereto must be limited so as to exclude from the
scope thereof, the compound as it existed in nature. In re Kebrich, 201 F.2d 951, 954,
96 USPQ 411, 413 (CCPA 1953). Compare In re Williams, 171 F.2d 319, 320, 80
USPQ 150, 152 (CCPA 1948). We find appellants have sufficiently limited the
scope of their purer form of diacetylrhein to a diacetylrhein containing less than 20 ppm
aloe-emodin components.
It has also been held that compound/substance extracted from its parent material
even in purer form is patentable only if it possesses a utility not possessed by the
patent material and not evident from the art. Ex parte Reed, 135 USPQ 34
(Bd. App. 1962). In our view, appellants have established that the state of the art is
that prior art methods of preparing diacetylrhein, and therefore prior art products
produced from these methods, have not provided a diacetylrhein product with less than
20 ppm of aloe-emodin. Appellants also provide evidence that the claimed product
differs from prior art products in its mutagenicity properties.
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007