Appeal No. 1997-1830
Application No. 08/389,860
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.”).2
With regard to claims 7-12, the preamble language merely recites the
purpose of the claimed method and adds no limitations to the claims. Therefore,
the preamble does not further limit these claims. See, e.g., Pitney Bowes Inc. v.
Hewlett Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir.
1999):
If . . . the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the preamble
offers no distinct definition of any of the claimed invention’s
limitations, but rather merely states, for example, the purpose or
intended use of the invention, then the preamble is of no
significance to claim construction because it cannot be said to
constitute or explain a claim limitation.
Claims 7-12 thus read on administration of alendronate to any patient for a
substantial period of time and, like claims 1-6 and 13-24, are anticipated by
Rodan.
(2) Claims 1-24 are rejected under 35 U.S.C. § 102(e) as unpatentable
over Strein. Strein teaches treatment of osteoporosis (col. 3, line 9) with
alendronate. Strein teaches treatment of postmenopausal (i.e., elderly) women
(col. 5, line 41). Strein teaches that alendronate treatment should be carried out
2 Although not necessary for this rejection, we note that Rodan also teaches use of alendronate
to reduce bone fracture risk in patients with osteoporosis. Rodan teaches that treatment with
alendronate in rat and baboon models of osteoporosis led to increased bone density and bone
strength, and that the bone after alendronate treatment was normal (page 375). Rodan
concludes that it is “highly likely that the correlation between bone density and bone strength,
observed in animal studies, will translate into a correlation between bone density and reduced
fracture risk in clinical studies” (page 376, sentence bridging the columns).
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007