Appeal No. 2004-1112 Page 9
Application No. 09/829,707
The claim limitations requiring the presence of a sustained release matrix,
which must be mixed with the acarbose, shows that the claims are limited to
acarbose formulations made according to the second method described in the
specification. According to the examiner, however, Patel discloses only “dosage
forms [that] can be designed for extended release, which can be [e]ffected by a
coated matrix composition.” Examiner’s Answer, page 3 (emphasis added).
Thus, the claims do not read on the compositions disclosed by Patel.
We also note that the examiner has not pointed to any specific
composition disclosed by Patel that contains both of the ingredients required by
instant claim 15. Rather, the examiner pointed to a passage in Patel that
disclosed acarbose as one of numerous possible active agents that could be
used, and pointed to another passage in Patel teaching that the disclosed
formulations could be made into coated dosages. The amount of picking-and-
choosing needed to distill the claimed composition from the reference disclosure
seems incompatible with a rejection for anticipation; at best, the reference would
seem to suggest (in the § 103 sense) the composition cited by the examiner as
the basis of the rejection.2
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b), we make the following new
ground of rejection: claim 43 is rejected under 35 U.S.C. § 102(e) as anticipated
by Rosner. Claim 43 is directed to a method of stimulating weight loss
2 We are not suggesting that the examiner should reject the claims as obvious in view of Patel,
only that the lack of specificity in the reference would seem to be another problem facing a
rejection for anticipation.
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