Appeal No. 2006-2861
Application No. 10/007,272
The Examiner has not set forth a prima facie case that Chamberlain
discloses any of the crystalline forms or the ethanol solvate of 5,6-dichloro-2
(isopropylamino)-1-ß-L-ribofuranosyl-1H-benzimidazole. Therefore, we
reverse the anticipation rejection.
The dissent argues that “it’s reasonable to conclude that at least some
portion of Chamberlain’s white solid is crystalline and substantially identical
to one of the presently claimed crystalline forms of the compound, given
identical chemical formulae, synthetic method and activity.” We disagree.
First, the “identical chemical formulae” of the claimed and prior art
products is irrelevant to patentability in this case because the instant claims
are not directed to the compound per se, but to the compound in specific
crystalline forms or as an ethanol solvate. The same applies to the assertion
that the claimed and prior art products have “identical . . . activity.”
The dissent also asserts that the claimed and prior art products are
made by an “identical . . . synthetic method.” This assertion is factually
wrong. The instant specification states that “[t]he compound of formula (I)
may be prepared by any method known in the art, but preferably by the
methods described in [Chamberlain]” (page 15) but that product is subjected
to further “conditions of separation and/or subsequent processing” to
produce the claimed crystalline forms or solvate. (Id. at 15, ll. 12-14.) See
also page 3, ll. 13-15, 23-25; and page 4, ll. 10-14 (describing the processing
required to convert the compound of formula (I) into Form II, the ethanol
solvate, and Form V, respectively).
In short, neither the Examiner nor our dissenting colleague has cited
any evidence to show that Chamberlain’s composition would reasonably
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