Appeal No. 1997-2801
Application 08/364,072
Discussion
Obviousness
The claimed subject matter is directed to preventing prostatic carcinoma in
humans, who are asymptomatic for prostatic cancer. According to appellants, the term
“[a]symptomatic . . . is meant that overt signs of the disease are not present, or indicated,
e.g. lumps or cysts on the prostate wall.” Specification, page 4, lines 16-19.
Johnson is directed to treating patients that have prostatic adenocarcinoma by
administering a therapeutical amount of a steroid 5-"-reductase inhibitor. Johnson
discloses that the inhibitor can include 17$-(N-tert-butylcarbamoyl)-4-aza-5"-androst-1-en-
3-one, which is the compound recited in appealed claim 4. Johnson, col. 2, lines 21-29;
col. 3, lines 5-6. Johnson discloses that the administration of steroid 5-"-reductase
inhibitor decreases the size of prostate tumors. Johnson, col. 3, lines 66-68. The patients
in Johnson do not meet the claim limitation “asymptomatic for prostatic cancer.”
The examiner states in the rejection that “one skilled in the art would be motivated to
employ the known anti-prostatic adenocarcinoma compounds of the prior to prevent
prostatic adenocarcinoma.” Answer, page 3, lines 15-19. However, the examiner has not
pointed to any specific disclosure in the prior art to support this statement. In response to
appellants’ arguments, the examiner argues that in the process of treating a patient, “there
is a time when the tumors is [sic, are] gone and the patient is still getting the drug . . . the
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