Appeal No. 97-2833
Application 08/236,190
use the specification of Keenan ‘928 as a dictionary to interpret the term “amount”. See
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582, 39 USPQ2d 1573, 1577
(Fed. Cir. 1996) (A patent specification “acts as a dictionary when it expressly defines
terms used in the claims or when it defines terms by implication.”). The Keenan ‘928
specification states that the most preferred dosage range is 15-90 mg/kg/day of (-)-
cotinine in the free base form (col. 6, lines 35-37), which falls within the range recited in
appellant’s claim 34. As for the duration of the treatment, one of ordinary skill in the art
would have had a reasonable expectation that because cotinine or a pharmaceutically
acceptable salt thereof is effective for long term weight control as recited in claim 1 of
Keenan ‘928, it necessarily would be effective for weight control for a shorter length of
time. The methods of administration recited in the claims which depend from
appellant’s claims 34, 45 and 56 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 ‘928.
DECISION
The rejection of claims 34, 35, 37-39, 41-46, 48-50, 52-57, 59-61, 63-66, 82, 83,
85 and 87-91 under 35 U.S.C. § 103 as being unpatentable over the Surgeon
General’s report in view of appellant’s admissions at pages 4-8 of the specification,
Borzelleca, Michaels, Abood ‘916, and Hutchinson, is reversed. A new ground of
rejection of claims 34, 35, 37-39, 41-46, 48-50, 52-57, 59-61, 63-66 has been entered
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