Interference 105,039 Paper No. 28
Andree v. Klintz Page 14
claims, and indeed Klintz's generic claims, taken as prior art,
anticipate the subgenus of compounds covered by Andree's involved
claims. No showing of unexpected results can rebut a prima facie
case of anticipation.
Nonetheless, Andree's motion, as interpreted supra, raises
and supports the critical issues needed to obtain the relief
Andree seeks as to each count.
The first critical issue is whether Andree has established a
prima facie case that Klintz is not entitled to a patent
containing claims 53-55 due to lack of an adequate written
description. If so, then the presence of the subgenus of
compounds covered by claims 53-55 within the genus of compounds
recited in claim 1 cannot constitute an anticipation of Andree's
involved claims that correspond to Count 1. In re Malagari, 499
F.2d 1297, 1302, 182 USPQ 549, 553 (CCPA 1974) (A proper
rejection under § 102 cannot be overcome by a showing of
unexpected results, which are relevant only to an obviousness
rejection.) Then, taking Klintz's claim 1 as prior art, we must
consider whether there is a prima facie case that the subgenus
covered by Andree's involved claims is obvious. If we hold that
a prima facie case of obviousness had not been established, or if
we find that Andree has shown unexpected results sufficient to
establish nonobviousness of its claimed subject matter, it would
follow that the interference was improvidently declared as to
Count 1. As no useful purpose would be served by prolonging the
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007