Appeal No. 2003-0919 Page 8
Application No. 09/463,097
Respecting the rejection under 35 U.S.C. § 103(a), the examiner notes that
Zimmermann's compounds can be used in the therapy of tumoral diseases. Again, we
shall assume arguendo, without deciding, that Zimmermann describes the
methanesulfonic acid addition salt of imatinib. The examiner apparently would invoke a
per se rule of obviousness, viz., that merely changing the form, purity, or another
characteristic of an old product, the utility remaining the same as that for the old
product, does not render the claimed product patentable. See Ex parte Hartop, 139
USPQ 525 (Bd. App. 1962). The examiner argues that (1) the $-crystalline form of the
methanesulfonic acid addition salt of imatinib is merely a different polymorphic form of
Zimmermann's methanesulfonic acid addition salt of imatinib; (2) the $-crystalline form
recited in applicants' claims and the compound described by Zimmermann both possess
anti-tumoral activity; and (3) accordingly, the subject matter sought to be patented in the
appealed claims would have been prima facie obvious in view of Zimmermann. We
disagree.
First, as stated in In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133
(Fed. Cir. 1995):
The use of per se rules, while undoubtedly less laborious than a searching
comparison of the claimed invention--including all its limitations--with the
teachings of the prior art, flouts section 103 and the fundamental case law
applying it. Per se rules that eliminate the need for fact-specific analysis of
claims and prior art may be administratively convenient for PTO
examiners and the Board. Indeed, they have been sanctioned by the
Board as well. But reliance on per se rules of obviousness is legally
incorrect and must cease.
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