Appeal No. 1997-1830
Application No. 08/389,860
for “at least two cycles” (col. 3, line 63) of up to 210 days, but can be continued
for “as long as it takes” (col. 5, line 31).
Strein also teaches oral administration of alendronate (col. 4, line 65) and
that “suitable dosages” are set out in U.S. Patent 4,822,609 (Flora), which Strein
incorporates by reference (col. 5, lines 14-17).3 Flora teaches that suitable daily
doses of alendronate are from about 0.0025 to 0.033 mg P/kg of body weight
(col. 5, lines 39-41). Since P makes up 25% of the molecular weight of
alendronate, Flora’s dosage range corresponds to 0.01 to 0.132 mg
alendronate/kg of body weight, or 0.5 to 6.6 mg alendronate for a 50 kg (110 lb.)
patient. The disclosed range overlaps the range recited in the instant claims.
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), Strein meets all the limitations of the instant claims. See In re
Woodruff, 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.”).
With regard to claims 7-12, as discussed above, the preamble language
merely recites the purpose of the claimed method and adds no limitations to the
claims. 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
Strein.
3 A copy of Flora is included with this decision.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007