Appeal No. 95-4823
Application 07/856,012
required by claim 11 on appeal. Thus, it is not readily apparent from this record whether
the dosages of diazepam used in Pino Capote fall within or without the claimed range.
Upon return of the application, the examiner should consider this relevant
disclosure of Pino Capote and determine whether the dosages of diazepam used in the
reference fall within or without the range required by claim 11 on appeal. If a dosage used
by Pino Capote falls within the range required by claim 11 on appeal, Pino Capote might
be anticipatory of claim 11. If the dosages used by Pino Capote all fall outside the range
required by claim 11, the examiner should determine whether it would have been obvious
to one of ordinary skill in the art to adjust the dosage to a value within the claimed range. In
so doing, the examiner should take into account Pino Capote’s finding that "diazepam was
found to reduce [intraocular pressure] in a dose-dependent manner (fig. 2)."
We also take this opportunity to comment upon some of appellants’ arguments
presented in regard to Pino Capote in the Appeal Brief. Appellants argue at page 8 of the
Appeal Brief that Pino Capote only discloses reduction of intraocular pressure in the
experimental cats for up to 20 minutes. Appellants believe that reducing intraocular
pressure for only 20 minutes is of no practical significance. We have two problems with
appellants’ argument. First, Pino Capote only measured intraocular pressure for 20
minutes which appears to be the reason why values are only reported in that time frame.
This does not mean that intraocular pressure was not reduced beyond 20 minutes. It only
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