Appeal No. 95-0885
Application 07/725,327
generic to “essential hypertension.” Considering the term “hypertension” in the context of its
ordinary meaning, we find that Hindley’s “hypertension” would include “essential hypertension.”
Both Mark and Kurtz I in their separate declarations set forth three reasons “why one of skill
would have no reason to expect that essential hypertension is treatable with thiazolidines after reading
the Hindley patent” (Mark declaration, ¶6(b) and Kurtz I declaration, ¶5(a)). First, Hindley is
primarily directed to the use of thiazolidines to treat diabetes and therefore one skilled in the art
would read Hindley as treating other diseases associated with Type II diabetes, including
hypertension, cardiovascular disease such as vascular occlusions, and eating disorders such as
hyperphagia (overeating) or polydipsia (excessive thirst). Second, if one reads Hindley as treating
the general “sign” of hypertension, the reference is meaningless outside the context of diabetes
because the reference would be suggesting a treatment for hundreds of different clinical disorders
with no guidance to the medical doctor for using the Hindley’s compound to treat a specific disorder.
The Mark declaration points out further that drugs effective for secondary hypertension conditions
such as glucocorticoid remediable aldosteronism can “dangerously exacerbate essential hypertension.”
Third, one skilled in the art would not have a reasonable expectation that Hindley’s compound would
be effective against “essential hypertension” because the etiology of essential hypertension is
complex and involves multiple factors such as insulin resistance, impaired renal function, excess
sympathetic nervous system activity, excess salt intake, and insufficient potassium intake. Because
of these multiple factors, one skilled in the art would not have been led to conclude with a reasonable
degree of certainty that Hindley’s thiazolidines would be useful to treat “essential hypertension.”
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