LINCK, Administrative Patent Judge, concurring-in-part and dissenting-in-
part
I agree with the majority that the Examiner’s anticipation rejection
should be reversed. However, the record before us supports a prima facie
case of unpatentability under § 102. Thus, a new ground of rejection should
be entered.
Appellants are claiming a prior art composition, i.e., 5,6-dichloro-2-
(isopropylamino)-1-ß-L-ribofuranosyl-1H-benzimidazole in a
pharmaceutically acceptable carrier. See Chamberlain, Example 5, col. 15,
and claim 20. The alleged distinguishing characteristic is in the form of the
particles, or crystals. Appellants state that the prior art compound is in an
amorphous form, while their compound is in several specific crystalline
forms, for example, Form II having “substantially the same X-ray powder
diffraction pattern as Figure 2”. Spec. at 1-2 & claim 11. Appellants
“preferably” synthesize 5,6-dichloro-2-(isopropylamino)1-ß-L-
ribofuranosyl-1H-benzimidazole using Chamberlain’s synthetic method.
Spec. at 15, ll. 1-2. The claimed crystalline forms are then obtained through
recrystallization from relatively common solvent systems. For example,
Form II is obtained by recrystallizing the allegedly “amorphous” form from
methanol and water or methanol and toluene. Spec. at 3, ll. 13-15.
Appellants do not provide any evidence comparing the form of
Chamberlain’s prior art compound with those now claimed, either in their
specification or by declaration. Further, while Appellants assert their
crystalline forms “are more thermodynamically stable,” “non-hygroscopic,”
and “have good storage properties” (Spec. at 2), again, they provide no
comparative data.
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