Appeal No. 2002-0941 Page 4
Application No. 09/166,445
Section 112
In our judgment, claims 1, 2, and 3 set out and circumscribe a particular area
with a reasonable degree of precision and particularity; and the examiner's rejection of
these claims under 35 U.S.C. § 112, second paragraph, for indefiniteness, lacks merit.
We shall not belabor the record with extensive commentary on this point, but simply
refer to applicants' discussion in the Appeal Brief, pages 3 and 4, with which we agree.
Additionally, the examiner does not invite attention to any language or limitation in
claims 1, 2, or 3 which would give rise to a case of indefiniteness.
The rejection under 35 U.S.C. § 112, second paragraph, is reversed.
Section 102(e)
The examiner argues that (1) Andrews describes a compound having formula I
illustrated in claim 1 on appeal; and (2) Andrews discloses that that compound
possesses antifungal activity. With respect to the particular polymorphic form recited in
the appealed claims (crystalline polymorph form I), the examiner acknowledges that
"Andrews is silent to [sic] as to nature of crystalline form produced" (Paper No. 18, page
4, first full paragraph). Nevertheless, the examiner would shift the burden of persuasion
to applicants to establish that the prior art compound disclosed by Andrews lacks the x-
ray powder diffraction pattern and infrared spectrum characteristics recited in
applicants' claims ("evidence in verified form is needed that the prior art compound
inherently lacks the characteristics relied on" id.). This constitutes reversible error.
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