Appeal 2007-3734
Application 11/286,137
Appellants also argue that “14-hydroxycodeione is a known impurity
that one skilled in the art would remove from an oral dosage form” (Reply
Br. 6). We are not persuaded by this argument. We agree with Appellants
that the evidence of record suggests that one of ordinary skill in the art
would like to remove 14-hydroxycodeione from oxycodone hydrochloride
preparations. However, the evidence of record indicates that, at the time of
Appellants’ invention, not all of the 14-hydroxycodeione was removed
(Chapman ¶¶ 13 and 14, which state that “[t]here is a continuing need in the
art to provide an oxycodone hydrochloride composition that contains
reduced amounts of 14-hydroxycodeinone as compared to compositions
known in the art”). Thus, for the reasons discussed above, we find that
Baker and Newman each anticipate claim 1.
We conclude that claim 1 is anticipated by, and therefore would have
been obvious over, Baker or Newman. As a result, we affirm the rejection
of claim 1 under 35 U.S.C. § 103. Claims 2-7 fall with claim 1. However,
because our reasoning differs from that of the Examiner, we designate our
affirmance of the rejection as a new ground of rejection under 37 CFR
§ 41.50(b) in order to give Appellants a fair opportunity to respond.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
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