Appeal 2007-1082
Application 10/327,383
1 when granulated. Basically, what the Examiner was investigating was
2 whether appellants on the one hand had an enabling description and if so on
3 the other hand whether the invention would have been obvious. The
4 Examiner’s technique is a proper and often used technique to accomplish the
5 examination required by 35 U.S.C. § 131 and 37 C.F.R. § 1.104 (2006) in
6 pharmaceutical and organic chemistry cases. In support of a first blush non-
7 enabling rejection, the Examiner mentioned Rouhi—as she should have to
8 support the rejection. Upon consideration of appellants’ arguments,
9 ultimately the Examiner became convinced that there was an enabling
10 description and so the lack of enablement rejection was withdrawn. But,
11 what appellants seek to do is create an “estoppel” against the Examiner from
12 forever changing her mind when becoming convinced an applicant has a
13 point with respect to one of numerous rejections. If the Examiner, at the
14 Examiner’s Answer stage, had harbored any doubt about enablement, we
15 would have had both an enablement and obviousness rejection before us.
16 Moreover, on the merits of the rejections before us, Rouhi seems to be a
17 “generic” discussion about numerous problems and concerns in the
18 pharmaceutical field. While paroxetine hydrochloride and cefadroxil are
19 mentioned (see page 30), neither are azithromycins—a fact which
20 immediately can be confirmed by reference to the 2001 Physicians’ Desk
21 Reference at pages 1003 and 3114. Appellants’ reliance on Rouhi is not
22 persuasive when weighed against the explicit azithromycin teachings of
23 Curatolo—a patent said to be owned by appellants’ assignee. Curatolo
24 convincingly shows that one skilled in the art uses wet granulating
25 techniques to make azithromycin tablets. Rouhi does not appear to mention
20
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