Appeal No. 2006-2861
Application No. 10/007,272
It is the Office’s responsibility to prevent the issuance of an invalid
patent. Yet the Office does not have the facilities to determine what form or
admixtures of forms Chamberlain’s compound takes. Given the facts of this
case, I conclude the record supports a prima facie case of anticipation under
35 U.S.C. § 102.
At this point, Appellants should bear the burden to show they are not
claiming something in the prior art and, in this case, for which they may
already have a patent.2 See, e.g., In re Spada, 911 F.2d 705, 709, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990) (“when the PTO shows a sound basis
for believing that the products of the applicant and the prior art are the same,
the applicant has the burden of showing that they are not”). Given the same
assignee owns both the Chamberlain patent and the pending application, this
burden would not be great. As Appellants observe: “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 14.
Appellants argue the Office has already granted a patent to “the same
specific crystalline forms,” citing U.S. Patent 6,469,160. Br. 4. I do not
believe that fact should have a bearing on our determination with respect to
the claims before us in this case. Thus, I have not given it any weight.
2 The present application and Chamberlain are owned by the same assignee,
SmithKlineBeecham, dba GlaxoSmithKline. Chamberlain will expire no
later than July 6, 2015.
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