Appeal No. 1999-0494
Application 08/482,768
pharmaceutical compositions described in Johnson do not possess this property. As
stated in In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977):
Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art products
do not necessarily or inherently possess the characteristics of his claimed
product. . . . Whether the rejection is based on `inherency' under 35 U.S.C. §
102, on `prima facie obviousness' under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced by the PTO's
inability to manufacture products or to obtain and compare prior art products
[footnote omitted].
If in future proceedings evidence is provided establishing that the cromolyn
sodium pharmaceutical compositions of Johnson do not possess this property, the
examiner would need to evaluate Johnson under 35 U.S.C. § 103 in light of other
relevant prior art to determine whether the claimed compositions, to the extent that they
include cromolyn sodium, would have been obvious. If on the other hand it turns out
that the cromolyn sodium pharmaceutical compositions described in Johnson do
possess this property, applicant's observation of this property, as opposed to the silence
of Johnson, does not mean that the compositions of claims 13-15 are patentable. As
stated in In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990)
(citations omitted) "discovery of a new property or use of a previously known
composition, even when that property and use are unobvious from the prior art, can not
impart patentability to claims to the known compositions."
2. Claims 17-21
These claims further limit claim 13 in regard to the pharmaceutically acceptable
carrier (claim 17), that the composition be orally, rectally, or nasally acceptable (claims
18-20) and the composition be in spray or aerosol form (claim 21). Johnson describes a
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