Appeal 2007-1378
Application 10/327,459
1 Appellants also maintain that the Examiner has engaged in hindsight.
2 We totally disagree and appellants have failed to explain why one skilled in
3 the art would not have used the Curatolo process choices to make the Singer
4 tablet. Binding precedent tells us that obviousness judgments are necessarily
5 based on hindsight, but so long as judgment takes into account only
6 knowledge known in the art, there is no hindsight error. In re McLaughlin,
7 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). The Examiner’s
8 rejections are based squarely on the prior art. There is no impermissible
9 hindsight in this case.
10 Appellants rely on Rouhi in an attempt to “catch” the Examiner
11 contradicting herself. The Examiner initially had held that the claimed
12 invention was based on a non-enabling description because, according to
13 appellants, the Examiner initially felt that there was some question whether
14 azithromycin (presumably Form F) would maintain its crystalline structure
15 when granulated. Basically, what the Examiner was investigating was
16 whether appellants on the one hand had an enabling description and if so
17 whether the invention would have been obvious. The Examiner’s technique
18 is a proper and often used technique to accomplish the examination required
19 by 35 U.S.C. § 131 and 37 C.F.R. § 1.104 (2006) in pharmaceutical and
20 organic chemistry cases. In support of a first blush non-enabling rejection,
21 the Examiner mentioned Rouhi—as she should have to support the rejection.
22 Upon consideration of appellants’ arguments, ultimately the Examiner
23 became convinced that there was an enabling description and so the lack of
24 enablement rejection was withdrawn. But, what appellants seek to do is
25 create an “estoppel” against the Examiner from forever changing her mind
17
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Last modified: September 9, 2013