Appeal No. 2006-2861
Application No. 10/007,272
the pharmaceutically acceptable carrier.” (Answer 3-4.) In particular, the
Examiner argues that the claimed compositions have the same biological
activity as the prior art composition:
Therefore, while the instant claims are not identical with the
prior art disclosure, they are effectively anticipated because the
alleged basis for distinction over the prior art, the specific
crystalline form of the active ingredient, has no effect
whatsoever on the inherent biological activity (anti-herpes virus
activity) of the molecules of the active ingredient.
(Answer 4 (emphasis added).)
Appellants argue that the “claimed invention differs from the
disclosure of [Chamberlain] in that [the] claims specifically recite a
‘crystalline form’ of the compound. The rejection improperly ignores this
element of the claims.” (Br. 3.) “Because the crystalline forms of the
compound are novel, compositions and methods of treatment comprising the
same novel crystalline forms of the compound are necessarily novel as
well.” (Br. 4.)
Appellants also argue that it “is wholly irrelevant to the question of
anticipation” that “the biological activity of the recited crystalline forms of
the compound is no different from the biological activity of the amorphous
form of the compound.” (Br. 4-5.) Appellants argue that they “are not
claiming the biological activity of the compound,” but “are claiming
pharmaceutical compositions comprising specific crystalline forms of the
compound and methods of treatment comprising administration of specific
crystalline forms of a compound.” (Br. 5.)
We agree with Appellants that the Examiner has failed to set forth a
prima facie case of anticipation. Chamberlain describes benzimidazole
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