Appeal No. 1999-1245
Application No. 08/245,282
intracellularly to modulate production of D-3 phosphoinositides in the T cell, e.g., such
as through inhibition of PI3K.
The rejection of the claims for obviousness of the claimed invention is reversed.
Other Issues
Upon return of the application to the examiner, the Merits Panel recommends
that the examiner consider the relevance of the attached patents and/or publication,
Bonjouklian 1 and 2, Weisinger, and Creemer, to the pending claims. In interpreting
claim 1, it would appear that the claim requires a single step of contacting a T cell with
an agent which acts intracellularly to modulate production of D-3 phosphoinositides in
the T cell, such as wortmannin or quercetin.
Creemer, claim 17, describes a method of inhibiting PI-3 kinase in mammals
comprising administering to a mammal an effective amount of a wortmannin derivative.
Boujouklian 1 and 2 also describe a method of inhibiting PI-3 kinase in a mammal in
need of treatment by administering wortmannin or analogs thereof. Weisinger
describes that administration of wortmannin to rats inhibits an inflammatory response.
It is a general rule that merely discovering and claiming a new benefit of an old
process cannot render the process again patentable. In re Woodruff, 919 F.2d 1575,
1577-78, 16 USPQ2d 1934, 1936-37 (Fed. Cir. (1990); Bird Provision Co. v. Owens
Country Sausage, Inc. 568 F.2d 369, 375, 197 USPQ 134, 139 (5th Cir. 1978); In re
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