Appeal No. 1996-0729
Application No. 07/859,572
Appellants argue that pharmaceutical compositions are inherently limited to only certain uses
based on only certain indications, e.g., a package insert describes the circumstances under which the
pharmaceutical composition would be used (brief, pages 8-9 and reply brief, page 7).
While intended use recitations and other types of functional language cannot be entirely
disregarded in apparatus, article, and composition claims, intended use must result in a structural
difference between the claimed invention and the prior art in order to patentably distinguish the claimed
invention from the prior art. If the prior art structure is capable of performing the intended use, then it
meets the claim. The directions in a package insert will not change the composition of the contents.
Here, there is no indication that the “laboratory” composition disclosed by Legrand II, which can bring
adenylate cyclase activity back to near basal levels (page 1104, col. 2, para. 3, last two lines), is any
different from the claimed “pharmaceutical” composition.
Accordingly, we sustain the rejection of claim 7 under 35 U.S.C. § 102 as being anticipated by
Legrand II.
Moreover, since anticipation is the epitome of obviousness (In re Fracalossi, 681 F.2d 792,
794, 215 USPQ 569, 571 (CCPA 1982)), we will also sustain the examiner's section 103 rejection of
claim 7 as unpatentable over Mitsuya, Ahluwalia, Herdewijn, Van Aerschot, Harmenberg and
applicants’ admission in view of Legrand II. A discussion of Mitsuya, Ahluwalia, Herdewijn, Van
Aerschot and Harmenberg is not necessary to our decision.
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