Appeal No. 94-4009 Paper No. 32
Application No. 07/953,716 Page 6
that the compounds may be used to inhibit after intimal
thickening or even lesions have occurred:
Accordingly, as a more effective inhibitor on
atherosclerotic intimal thickening, a drug capable
of directly acting on such atherosclerotic lesion,
is desired. [Paper No. 1 (Spec.) at 2 (emphasis
added).]
The compound of the present invention may be [a]
potent inhibitor [of] adhesion of blood cells (such
as monocytes, macrophages), to endothelial cells,
and may [] suppress the response of [the] early
phase for atherosclerotic thickening. [Paper No. 1
(Spec.) at 6 (emphasis added).]
Since Appellants use the same compounds in the same
dosages as Fujikawa, patients treated according to Fujikawa's
teachings would be expected to obtain the same benefits.
Thus, these purposes do not--by themselves--distinguish the
claimed subject matter from Fujikawa's methods. In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) (A
new use will not make an old compound patentable). The
question remains, however, whether having one of these
purposes further limits the steps of the method.
Administering to a patient in need thereof
The question this phrase of claim 11 presents is what is
it that the patient is in need of? Grammatically, the
"thereof" refers to an effective amount of the compounds to be
administered. Cf. In re Hyatt, 708 F.2d 712, 714, 218 USPQ
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