Appeal No. 2002-0438 Page 3
Application No. 09/181,671
well as its use in pharmaceutical compositions. Dieter does not discuss any
possible crystal polymorphism of the disclosed compound.
Kirk-Othmer is cited for teaching that
polymorphism is a condition in which a specific chemical compound
may crystallize in different forms, that is, different space groups
and with different physical and physico-chemical properties. An
example is given of a simple compound, ammonium nitrate, with
four form changes. In the paragraph which follows, it is stated that
a specific polymorph may be absolutely essential for a particular
crystalline product. By way of example, it is generally stated that
one polymorph may have more desirable physico-chemical
properties, i.e.[,] color, hardness, solubility or stability than another.
Examiner’s Answer, page 3.
The examiner notes that the instant claims are distinguishable over the
prior art on the basis that it crystallized in three distinct crystalline forms, but
states that “this does not render the compound in these crystalline forms
patentable over the compound itself. The compound is neither new or novel, nor
is its claimed use.” Id. at 4. The rejection concludes that:
It would have been obvious to one of ordinary skill in the art
at the time of the invention that the three crystalline forms claimed
by appellant[s] were intrinsic to the compound of the prior art,
motivated by the fact that it is well known in the chemical arts that
crystal polymorphism is a common and commonly recognized
property of crystalline compounds.
Id.
Appellants argue that the examiner has failed to set forth a prima facie
case of obviousness. Specifically, appellants argue that, at best, the
combination teaches that the claimed compound may have polymorphisms that
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