Ex parte Cole et al.

Board of Patent Appeals and Interferences

May 27, 1999

08418055 (B.P.A.I. May. 27, 1999)

Application for patent filed April 6, 1995. According1
to the appellants, the application is a continuation of
Application 07/749,482, filed August 15, 1991; which is a
continuation of Application 07/210,339,filed June 23, 1988,
now abandoned; which is a continuation of Application
05/569,007, filed April 17, 1975, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MARTIN COLE, THOMAS T. HOWARTH and CHRISTOPHER
READING
__________
Appeal No. 98-0573
Application 08/418,0551
___________
HEARD: May 3, 1999
___________
Before GARRIS, OWENS and LIEBERMAN, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-0573
Application 08/418,055
2
This is an appeal from the examiner’s final rejection of
claims 36-42, which are all of the claims remaining in the
application.
THE INVENTION
Appellants’ claimed invention is directed toward purified
clavulanic acid and specified purified salts thereof.
Appellants state that clavulanic acid and its salts enhance
the effectiveness of $-lactam antibiotics against many $-
lactamase producing bacteria. Claims 36 and 37 are
illustrative and read as follows:
36. Purified clavulanic acid.
37. A purified pharmaceutically acceptable salt of
clavulanic acid.
THE REFERENCE
Eli Lilly & Co. (Lilly) 1,315,177 Apr. 26,
1973
THE REJECTIONS
Claims 36-42 stand provisionally rejected under the
judicially created doctrine of obviousness-type double
patenting over claims 35 and 36 of copending Application
Appeal No. 98-0573
Application 08/418,055
3
08/417,628 and over claims 36, 37 and 41-45 of copending
Application 08/417,625. Claims 36-42 also stand rejected
under 35 U.S.C. § 103 as being unpatentable over Lilly.
OPINION
Appellants do not challenge the obviousness-type double
patenting rejections. We therefore summarily affirm these
rejections. As for the rejection under 35 U.S.C. § 103, we
have carefully considered all of the arguments advanced by
appellants and the examiner and agree with appellants that
this rejection is not well founded. Accordingly, we do not
sustain the rejection under 35 U.S.C. § 103.
The examiner argues that Lilly teaches (page 2, lines 30-
31) that the fermentation broth contains “other antibiotic
substances” and that since these substances have been found to
include clavulanates, and clavulanates have been identified as
antibiotics, it would have been prima facie obvious to one of
ordinary skill in the art to purify the compounds recited in
Appeal No. 98-0573
Application 08/418,055
4
appellants’ claims (answer, page 4).
This argument is not persuasive because the examiner has
not established that those of ordinary skill in the art were
aware that clavulanic acid or the salts thereof recited in
appellants’ claims were known in the art to be to be among the
“other antibiotic substances” mentioned in Lilly or to have
any other
use. Thus, it is not apparent from the record why one of
ordinary skill in the art would have been motivated to purify
these compounds. The record indicates that the motivation
relied on by the examiner for purifying clavulanic acid or its
salts comes solely from appellants’ specification. Hence, the
examiner’s rejection is based on impermissible hindsight. See
W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276
F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we
do not sustain the rejection under 35 U.S.C. § 103.
DECISION
Appeal No. 98-0573
Application 08/418,055
5
The provisional rejections of claims 36-42 under the
judicially created doctrine of obviousness-type double
patenting over claims 35 and 36 of copending Application
08/417,628 and over claims 36, 37 and 41-45 of copending
Application 08/417,625 are affirmed. The rejection of claims
36-42 under 35 U.S.C. § 103 as being unpatentable over Lilly
is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Appeal No. 98-0573
Application 08/418,055
6
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PAUL LIEBERMAN )
Administrative Patent Judge )
TJO/pgg
Janice E. Williams
Smithkline Beecham Corporation
Corporate Intellectual Property-UW2220
P.O. Box 1539
King of Prussia PA 19406-0939