Appeal No. 2006-2861
Application No. 10/007,272
Appellants admit their now-claimed composition has the same
biological activity as the prior art composition. Br. 4-5. Appellants argue
identity of biological activity is “wholly irrelevant to the question of
anticipation.” Br. 5. The majority agrees. I do not. Identical activity
provides one piece of evidence that the compounds are substantially the
same.
Tellingly, Appellants contemplate mixtures of different forms of 5,6-
dichloro-2-(isopropylamino)-1-ß-L-ribofuranosyl-1H-benzimidazole rather
than ones that are in a pure crystalline form, such as Form II:
The present invention expressly contemplates . . . mixtures of
any anhydrous crystalline form or solvate with one or more
of the amorphous compound of formula (I) [i.e., 5,6-
dichloro-2-(isopropylamino)-1-ß-L-ribofuranosyl-1H-
benzimidazole] and/or other anhydrous crystalline forms and
solvates. It should be understood that admixtures of a
particular form or solvate with amorphous compound of
formula (I) and/or other crystalline forms or solvates may
result in the masking or absence of one or more of the
foregoing X-ray powder diffraction peaks . . . for that
particular form. Methods are known in the art for analyzing
such admixtures of crystalline forms in order to provide for
the accurate identification of the presence or absence of
particular crystalline forms in the admixture. [Spec. at 13-
14. See also the language “comprising” in claim 11.]
Thus, Appellants’ claims cover an admixture of forms in which the
amorphous form predominates and Form II is only present in trace amounts.
Appellants argue their claims “do not encompass compositions or
methods comprising non-crystalline forms of the compound.” Reply at 2.
This argument is inconsistent with their position elsewhere (Spec. at 13-14
11
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