Appeal No. 2003-1106
Application No. 09/825,896
II. The 35 U.S.C. § 101 Statutory Double Patenting Rejection
A. The Examiner’s Position
Beginning on page 4 of Paper No. 5, the examiner rejects
claims 25-27 under 35 U.S.C. § 101 as claiming the same
invention as that of claims 22-24 of Steiner. The examiner
repeats this rejection in Paper No. 9 and states: “Applicants
arguments have been considered but are not persuasive. In view
of the disclosure in the specification on page 4 it is inherent
that the instant compounds are non-immunosuppressive and have an
affinity for FKBP-type immunophilins.” Paper No. 9, page 2. We
agree with the examiner’s position in view of our claim
interpretation discussed above.
B. The Appellants’ Position
Beginning on page 3 of the Brief, appellants argue that the
statutory double patenting rejection is improper “when the ‘same
invention’ is not claimed by the two sets of claims”.
Appellants discuss reasons why they believe the two sets of
claims are not claiming the same invention on pages 3-4 of the
Brief.
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