Appeal No. 94-4009 Paper No. 32
Application No. 07/953,716 Page 12
counsel what symptoms would indicate that treatment in
accordance with the method of claim 11 would be appropriate.
He suggested a family history of atherosclerosis would suggest
prophylactic treatment. The specification also suggests that
hyperlipidemia is an indication. Fujikawa's compounds are
useful for treating hyperlipidemia. Early treatment of
hyperlipidemia patients would at least often (and prophylactic
treatment of otherwise asymptomatic patients would
necessarily) occur before atherosclerotic intimal thickening.
See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936
(Fed. Cir. 1990) ("It is a general rule that merely
discovering and claiming a new benefit of an old process
cannot render the process again patentable.").
After reviewing the evidence of record, we find that the
method described in each Fujikawa patent anticipates claim 11.
This finding is not a new ground of rejection because
anticipation is the epitome of obviousness, so the subject
matter of anticipated claims is necessarily obvious. Paulsen,
30 F.3d at 1481, 31 USPQ2d at 1675; In re Baxter Travenol
Labs., 952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir.
1991)).
Claims 12-14 are directed to therapeutic benefits that we
found to be inherent in the early use of Fujikawa's compounds.
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