Appeal No. 2004-0543 Page 7
Application No. 10/010,678
while Athe active ingredient for use in the treatment of benign prostatic hypertrophy can
be administered in a wide variety of therapeutic dosage forms in conventional vehicles
for systemic administration, as, for example, by oral administration in the form of tablets,
capsules, solutions or suspensions, of [sic] by intravenous injection@ (id.).
We find (1) that Rasmusson=s use of the term Atopical@ administration does not
include systemic administration, and therefore, does not include Atransdermal@
administration; and (2) that none of the Avehicles for systemic administration@ described
in the reference are suitable for transdermal administration. Therefore, we conclude
that Rasmusson does not anticipate the claimed invention, and the rejection of claims
28, 29 and 31-34 under 35 U.S.C. ' 102(b) is reversed.
Unpatentability over Rasmusson and Goldman
Claims 30 and 35-37 stand rejected under 35 U.S.C. ' 103(a) as unpatentable
over Rasmusson and Goldman. The underlying premise of the rejection is that
Rasmusson describes transdermal administration of a 5α-reductase 2 inhibitor, and
lacks only a description of a transdermal skin patch; the examiner relies on Goldman to
make up this deficiency.
As discussed above, we do not agree that Rasmusson describes transdermal
administration of a 5α-reductase 2 inhibitor. On the other hand, we agree with the
examiner that Goldman is relevant to the claimed invention, but for reasons somewhat
different than those of the examiner. Therefore, we vacate the examiner=s rejection of
claims 30 and 35-37 and enter the following new ground of rejection under the
provisions of 37 CFR ' 41.50(b).
NEW GROUND OF REJECTION UNDER 37 CFR ' 41.50(b)
Claims 28-37 are rejected under 35 U.S.C. ' 103(a) as unpatentable over
Goldman. Claim 28 is directed to a method of treating androgenic alopecia comprising
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