Appeal No. 2001-1218 Page 3
Application No. 08/727,798
DISCUSSION
1. Obviousness-Type Double Patenting
Claims 19-27 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1-3 and 5-
25 of the ’468 patent and claims 1-7 of the ’932 patent.
According to the rejection, the claims of the instant application are not
patentably distinct from the issued claims
because the instant intermediates in its protected form are obvious
variants of the final products in its unprotected form. The protected
form of a peptide is but its final product wherein all of the protecting
groups have been removed. One having ordinary skill in the art, at
the time the invention was made, knows that the final, unprotected
product is obtained from its protected intermediate wherein each of
the protecting groups have been removed with an appropriate
reagent. . . . Accordingly, the instant protected peptide compounds
are obvious variants of the unprotected ones.
Examiner’s Answer, pages 3-4.
Appellants argue that the instantly claimed invention is not an obvious
extension of what is claimed in the ’468 and ’932 patents. According to
appellants, while the instantly claimed compounds may be used to synthesize
the peptides claimed in the issued patents, other intermediates may also be
used, and the instantly claimed intermediates may also be used to arrive at
peptides other than those claimed in the issued patents. See Appeal Brief,
pages 7-13. We agree.
The question that needs to be addressed is whether the instantly claimed
intermediates are an obvious variation of the patented claims. In resolving that
question, the disclosure of the issued patents may not be used as prior art
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