Appeal No. 1997-2751
Application No. 08/159,096
Discussion
The pending claims are drawn to a method of treating fractures in
mammals by administering a methanebisphosphonic acid compound. The
examiner rejected all of the claims as obvious over Fitton, Gall,2 Kanis, and
Henricson. According to the exa miner, Fitton discloses the use of
bisphosphonate in “bone fracture medications” and Gall teaches use of
bisphosphonates when the process of bone formation and breakdown is
disturbed. The examiner cited Kanis and Henricson as showing “the breadth and
wealth of knowledge of diphosphonates in bone therapy.” Examiner’s Answer,
page 3. The examiner concluded that any differences between the prior art and
the claimed method amounted merely to optimizing parameters, and therefore
the cited prior art would have made the obvious the claimed method.
Appellants argue that the references cited by the examiner do not support
a prima facie case of obviousness, for several reasons. Appellants argue that
resorptive bone disorders (e.g., osteoporosis) are caused by a mechanism that is
completely different from bone fracture. Appellants also argue that treatments for
the two types of disorders are also completely different, in that the systemic
periodical.”). Fortunately, Appellants in their Brief provided full citations to the references relied
on by the Examiner, allowing us to discern the basis for the rejection.
2 We note that the examiner relied on EP 252505 (Gall), which is in German, in her statement of
the rejection but cited to a U.S. Patent when discussing what is disclosed by Gall. We assume
the U.S. Patent cited is 4,942,157 (Gall), which Appellants indicate in their Brief corresponds to
EP 252505. We also note that U.S. Patent 4,942,157 issued on July 17, 1990, making it prior art
with respect to the instant claims under 35 U.S.C. § 102(b). We are baffled by the examiner’s
reliance on a reference in German when a corresponding English language reference was in the
record. It should be obvious that when two equivalent references are available, one in English
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