Appeal No. 2002-1254 Page 4
Application No. 09/411,381
In response to the examiner’s reliance on Latter, Appellant filed a
declaration under 37 CFR § 1.132. See Paper No. 10, filed Nov. 8, 2000. In his
declaration, Appellant stated that
• “Micronisation is a typical milling procedure used to pulverise [a]
drug substance. However, in this form atovaquone was limited in
its efficacy by poor bioavailability.” ¶ 5.
• “[C]onventional milling techniques, used to reduce the particle
size of crystalline chemical compounds, had all failed to provide
small particles of atovaquone which demonstrated improved
bioavailability.” ¶ 9.
• “[M]icrofluidisation can be used to prepare consistently smaller
particles of atovaquone than those achievable by conventional
techniques and . . . said particles do indeed display improved
bioavailability compared with non-microfluidised atovaquone.”
¶ 10.
Appellant attached to the declaration the results of an experiment in which
atovaquone was micronized in order to reduce its particle size; micronization did
not result in particles having the size range recited in the instant claims. See
Annex 1 attached to Paper No. 10.
“It is well settled that a claim is anticipated if each and every limitation is
found either expressly or inherently in a single prior art reference.” Celeritas
Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522
(Fed. Cir. 1998). “It is also an elementary principle of patent law that when, as by
a recitation of ranges or otherwise, a claim covers several compositions, the
claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp. of
America v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 779 (Fed. Cir. 1985). In
addition, “when the PTO shows sound basis for believing that the products of the
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