Appeal No. 2003-1716 Page 7
Application No. 09/946,205
specification, page 2, line 23, is unclear, but may mean that a combined product was
not commercially developed because it was perceived to have inadequate active
substance release and bioavailability. But that does not constitute evidence that Lukas-
Laskey is a non-enabling reference. That does not constitute evidence that persons
skilled in the art, given the disclosure of Lukas-Laskey, could not prepare a tablet
comprising the active ingredients recited in claim 1 and "at least one pharmaceutically
acceptable additive."
We are mindful that the subject application is a divisional of Application No.
09/447,872, filed November 23, 1999, now U.S. Patent No. 6,403,579. In the '579
patent, the PTO issued claims drawn to applicant's process for producing a solid
dosage form pharmaceutical combination preparation containing carvedilol, or a
pharmaceutically acceptable salt thereof, and hydrochlorothiazide, or a
pharmaceutically acceptable salt thereof. However, merely because the PTO issued
claims drawn to applicant's process in the '579 patent, it does not follow that Lukas-
Laskey constitutes a non-enabling reference. Again, applicant's position to the
contrary, Lukas-Laskey sufficiently describes the tablet recited in claim 1 "to have
placed the public in possession of it."
All in all, we find that the evidence in favor of patentability relied on by applicant
does not outweigh the evidence against patentability relied on by the examiner. On this
record, applicant has failed to adduce evidence sufficient to rebut the examiner's prima
facie case of anticipation of claim 1. Accordingly, we affirm the rejection of claim 1
under 35 U.S.C. § 102(b) as described by Lukas-Laskey. As previously indicated,
dependent claims 2 through 5 fall together with independent claim 1.
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