Appeal No. 2006-2861
Application No. 10/007,272
(quoted above)) and with the language of their claims. Clearly their
“comprising” language encompasses compositions or methods “comprising
non-crystalline forms of the compound.”
Chamberlain fully discloses and claims 5,6-dichloro-2-
(isopropylamino)-1-ß-L-ribofuranosyl-1H-benzimidazole in a
pharmaceutically acceptable carrier. See Example 5, col. 15, and claim 20.
Chamberlain purifies the compound using a silica gel column and a
chromatron. Col. 15, ll. 25-32. Both purification techniques use a
methanol:dichloromethane solvent system (ratio 1:20 and 1:25). Id. The
resulting compound is a “white solid” and appears to be anhydrous (like the
claimed compounds), based on Chamberlain’s analytical data. Id.; col. 15,
ll. 42-43. The term “solid” is also used to describe Appellants’ Form II
product. See, e.g., Spec. at 22, l. 12.
The term “amorphous” does not appear in Chamberlain. Nor is there
any teaching or suggestion that Chamberlain’s compound is non-crystalline.
Thus, 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. And, even if only a trace amount
of Chamberlain’s “white solid” inherently is in one of the claimed crystalline
forms, the claim covering that form is anticipated. See Smithkline Beecham
Corp. v. Apotex, 403 F.3d 1331, 1339-40, 74 USPQ2d 1398, 1403-04 (Fed.
Cir. 2005) (holding that a claim to “Crystalline paroxetine hydrochloride
hemihydrate,” in essence, would cover a single molecule of hemihydrate,
even if not detectable).
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