Appeal No. 95-2851
Application 08/012,379
and 70-74 are rejected under the judicially created doctrine of obviousness-type double
patenting over claims 1-17 of Keenan ‘774 in view of appellant’s admitted prior art.4
Claims 13 and 26 of Keenan ‘007 differ from appellant’s independent
method claims 1, 12, 23 and 91 in that the Keenan ‘007 claims recite administering
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cotinine or a pharmaceutical salt thereof, whereas appellant’s claims 1, 12, 23 and 91
recite administering a nicotine metabolite or combination of nicotine metabolites or
pharmaceutical salts thereof. Appellant’s dependent claims 2, 13, 24 and 92 recite that
the nicotine metabolite can be, inter alia, (-)-cotinine. The teaching by Keenan ‘007 of
use of cotinine would have fairly suggested, to one of ordinary skill in the art, use of a
nicotine metabolite because, as acknowledged by appellant (specification, page 4),
cotinine was a known nicotine metabolite. Use of the methods of administering the
nicotine metabolite recited in appellant’s claims which depend from claims 1, 12, 23
and 91 would have been prima facie obvious to one of ordinary skill in the art in view of
the recitation of such methods in the dependent claims of Keenan ‘007.
Regarding appellant’s article claims 67, 68 and 70-74, given that cotinine is
administered as recited in the Keenan ‘007 claims, it would have been apparent to one
4No rejection is applied to claims 75-90.
5Keenan ‘007 at col. 6, lines 11-17 indicates that the amount of cotinine which,
as recited in the Keenan ‘007 claims 13 and 26, is the same as the amount recited in
appellant’s independent claims, is calculated as (-)-cotinine in the free base form.
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