Appeal No. 1997-1830
Application No. 08/389,860
Having considered the record, we conclude that the examiner failed to
properly consider the evidence submitted by Appellants to rebut the prima facie
case of obviousness. The declaration by Dr. Karpf contains factual assertions,
supported by citations to the scientific literature, which cast doubt on the
examiner’s position that a person of ordinary skill in the art would have found
Rosini suggestive of treating osteoporosis-related symptoms with alendronate.
The examiner made no serious attempt to address the facts asserted in the Karpf
declaration.
Considering the evidence of record as a whole, as we must, we find that
Rosini would not have rendered the claimed method obvious. The rejection
under 35 U.S.C. § 103 is reversed.
New Grounds of Rejection
Under the provisions of 37 CFR § 1.196(b), we make the following new
grounds of rejection:
(1) Claims 1-24 are rejected under 35 U.S.C. § 102(b) as unpatentable
over Rodan. Rodan teaches administration of alendronate to patients with
osteoporosis, including postmenopausal (i.e., elderly) women (page 375, left-
hand column). Rodan teaches alendronate administration for up to 10 years
(page 376, right-hand column); oral administration of 5-80 mg alendronate (page
374, right-hand column); and daily doses of 5 mg (page 376, right-hand column).
Since the preamble language in the instant claims adds at most the limitation that
the claimed method be carried out on osteoporotic women (claims 1-6 and 13-
24), Rodan meets all the limitations of the instant claims. See In re Woodruff,
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