Ex Parte 5855920 et al - Page 7




               Appeal No. 2005-2593                                                                                 7                
               Application No. 90/005,867                                                                                            

                               DHEA should be given “to effect.”  “To effect” is defined as                                          
                       sufficient to lower that particular patient’s insulin levels down to either                                   
                       basal levels or, if basal levels are elevated in comparison to an accepted                                    
                       standard for good health and long life, to levels deemed to maximize                                          
                       longevity and health.                                                                                         
               See also claim 2 of Fahy (“said second component [DHEA] is administered at doses                                      
               sufficient to maintain serum insulin levels at about the levels found in normal, healthy                              
               patients”).                                                                                                           
                       At most, Fahy suggests that one supplemental hormone (DHEA) is determined to                                  
               be below a predetermined level.  Furthermore, Fahy does not disclose that any of the                                  
               supplemental hormones listed in claim 1 are replenished to predetermined levels.                                      
               Therefore, the rejection of claim 1 under 35 U.S.C. § 102(b) as being anticipated by                                  
               Fahy is reversed.  See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2                                   
               USPQ2d 1051, 1053 (Fed. Cir.) ("A claim is anticipated only if each and every element                                 
               as set forth in the claim is found, either expressly or inherently described, in a single                             
               prior art reference.”), cert. denied, 484 U.S. 827 (1987).                                                            
                       Claims 2, 7 and 8 are dependent on claim 1.  Therefore, the rejection of claims 2,                            
               7 and 8 under 35 U.S.C. § 102(b) as being anticipated by Fahy is also reversed.  See                                  
               37 CFR § 1.75(c) (2002) (“Claims in dependent form shall be construed to include all                                  
               the limitations of the claim incorporated by reference into the dependent claim.”).                                   
                       B.      Rejection of claims 1, 2 and 4-8 under 35 U.S.C. § 103                                                
                       Claims 1, 2 and 4-8 are rejected under 35 U.S.C. § 103 as being unpatentable                                  
               over the combined teachings of Fahy, Scow, Umbreit and Pierpaoli.                                                     
                       The examiner relies on the teachings of Scow, Umbreit and Pierpaoli to                                        





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