Appeal No. 2003-0919 Page 7
Application No. 09/463,097
salt of imatinib. Nor can the examiner point to any passage in Zimmermann disclosing
or suggesting applicants' method for making the $-crystalline form, or establishing a
reasonable basis for concluding that the methanesulfonic acid addition salt of imatinib
meets all limitations of the appealed claims. On the contrary, the examiner
acknowledges that "Zimmermann is silent as to the existence of one or more forms for
its salts;" and the examiner has withdrawn the previously entered rejection of process
claim 12 (Paper No. 17, section (3)).
On these facts, the examiner is not in a position to invoke the principles
enunciated in In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596-97 (CCPA 1980);
In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977); and In re
Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971). Rather, the facts
here more closely resemble those presented to another merits panel of this board in Ex
parte Skinner, 2 USPQ2d 1788 (Bd. Pat. App. & Int. 1986). As stated by the Board in
Skinner:
We are mindful that there is a line of cases represented by In re
Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971) which indicates
that where an examiner has reason to believe that a functional limitation
asserted to be critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, the examiner
possesses the authority to require an applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic
relied on. Nevertheless, before an applicant can be put to this
burdensome task, the examiner must provide some evidence or scientific
reasoning to establish the reasonableness of the examiner's belief that the
functional limitation is an inherent characteristic of the prior art. In the
case before us, no such evidence or reasoning has been set forward. [Id.
at 1789].
The rejection under 35 U.S.C. § 102(b) is reversed.
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