Appeal No. 1999-0494
Application 08/482,768
under the enablement requirement of 35 U.S.C. § 112, first paragraph, not the
dependency requirement of the fourth paragraph of this section of the statute.
The examiner's rejection under 35 U.S.C. § 112, fourth paragraph, is reversed.
2. Obviousness
The examiner's facts and reasoning in support of the rejection under this section
of the statute are:
Merck teaches purpurogallin used as a pharmaceutical to retard oxidation,
Johnson teaches at column 1, lines 25-30 the use of cromolyn sodium as an
antiasthmatic drug and Haber et al at column 1, lines 4-67 teaches the use of
pyrimethamine in a pharmaceutical composition. The compositions of claims 13-
15 and the mode and means of administration of claims 17-21 are obviated
under 35 U.S.C. 103 since an intended use limitation does not render the
composition unobvious. See In re Skoner, 186 USPQ 80, (CCPA 1975); In re
Kalm 154 USPQ 10 (CCPA 1967); In re Halley 132 USPQ 16 (CCPA 1961).
For these reasons the claimed subject matter is deemed to fail to
patentably distinguish over the state of the art as represented by the cited
references. The claims are therefore properly rejected under 35 U.S.C. 103.
Examiner's Answer, pages 3-4. The examiner further explains the rejection stating "the
rejection of claims 13-21 [sic, 13-15, 17-21] under 35 USC 103 (a) is deemed proper
since the compositions claimed are taught by the art." Id., page 5.
The examiner's position on appeal as to why the subject matter of any individual
claim would have been obvious to one of ordinary skill in the art under this section of the
statute is difficult to discern. By the examiner's statement, that the "compositions
claimed are taught by the art" bespeaks of an anticipation rejection under 35 U.S.C.
§ 102, not an obviousness rejection under 35 U.S.C. § 103. Furthermore, the
examiner's fact finding is open to question in regard to certain of the applied references.
For example, the examiner states that the Merck Index teaches "purpurogallin used as a
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007