Appeal No. 1997-2167
Application 08/137,444
disclose how the claimed compounds may be administered, what
constitutes effective quantities for administration and the
form in which the compounds may be administered (page 8, lines
1 through page 9, line 28 of the specification). Possessed of
this disclosure, we have no doubt but that the skilled
routineer would be able to prepare and use the claimed
compounds in the manner disclosed above.
The examiner's criticism of the claims as set forth in
the statement of his rationale for rejecting the claims
appears to be an expression of his concern that the claimed
compounds and method of using the same may not be efficacious
or even work at all. While the examiner's concern is
laudable, it is misplaced here. As the court observed in In
re Brana, 51 F.3d 1560, 1567, 34 USPQ2d 1436, 1442 (Fed. Cir.
1995):
The Commissioner, as did the Board, confuses the
requirements under the law for obtaining a patent
with the requirements for obtaining government
approval to
market a particular drug for human consumption. See Scott v.
Finney, 34 F.3d 1058, 1063, 32 USPQ2d 1115, 1120 (Fed. Cir.
1994)
Simply stated, approval of the Food and Drug Administration is
not a prerequisite for finding a compound useful within the
17
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007