Appeal No. 97-2833
Application 08/236,190
Claims 34, 35, 37-39, 41-46, 48-50, 52-57, 59-61, 63-66 are rejected under the
judicially created doctrine of obviousness-type double patenting over claims 1-11 of
Keenan ‘928.3
Appellant’s independent claim 34 differs from claim 1 of Keenan ‘928 in that 1)
appellant’s claim 34 recites administering one or more nicotine metabolites or their
pharmaceutically acceptable salts whereas claim 1 of Keenan ‘928 recites
administering cotinine or a pharmaceutical acceptable salt thereof, 2) in appellants’
claim 34, administering 1-100 mg/kg of body weight of nicotine metabolites or their
pharmaceutically acceptable salts in the free base form is recited, but the amount of
cotinine or a pharmaceutical acceptable salt thereof is not recited in claim 1 of Keenan
‘928, and 3) appellant’s claim 34 is directed toward managing short term human body
weight changes whereas claim 1 of Keenan ‘928 is directed toward control of long term
human body weight. Appellant’s independent claims 45 and 56 differ from claim 1 of
Keenan ‘928 only in the first and second respects noted above.
Because cotinine is a nicotine metabolite, the recitation in claim 1 of Keenan
‘928 of administering cotinine is a disclosure of administering a nicotine metabolite.
Regarding the amount of cotinine administered in claim 1 of Keenan ‘928, it is proper to
3No new ground of rejection is applied to claims 82, 83, 85 and 87-91.
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