Appeal No. 95-2993
Application 08/019,387
Metz, Administrative Patent Judge, Concurring-in-part, dissenting-in-part.
I agree with the decision of the majority reversing the rejection of claims 2 through
12 and 14 under 35 U.S.C. § 112, first paragraph. However, I would not leave the important
questions denominated by the majority as "Other Issues" in legal and procedural limbo but
would exercise the Board's authority under 37 C.F.R. § 1.196(b). I would make rejections
of claims 9 through 12 as unpatentable under 35 U.S.C. § 103 as the subject claimed
therein would have at least been prima facie obvious from the admitted disclosure in
Hughes et al. of 8,9-dehydroesterone as a known steroid possessing estrogenic activity.
Accordingly, I dissent-in-part from the majority's opinion. Further, pursuant to 37 C.F.R. §
1.196(b), I would also enter a rejection of claims 9 and 11 as being unpatentable on the
grounds of obviousness-type double patenting over the claims of U.S. Patent Number
5,210,081.
Claims 9 through 12 comprise a method of treatment comprising administering to a
patient in need of anti-atherosclerotic treatment an effective amount of either 8,9-
dehydroestrone or a salt of 8,9-dehydroestrone sulfate ester. Thus, claims 9 through 12
embrace administering to a patient in need of treatment 8,9-dehydroestrone. As noted
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