Appeal No. 1997-2801
Application 08/364,072
Rasmusson teaches that the active agents are to be used to treat benign prostatic
hyperplasia without qualification as to whether the patients are symptomatic or
asymptomatic for prostatic cancer. To the extent Rasmusson teaches the administration
of the active agents to patients who are asymptomatic for prostatic cancer, those patients
meet the requirements of the claims on appeal in regard to (1) the persons being treated,
(2) the active agent used and (3) the amounts of active agent used. Thus, we hold that
Rasmusson describes the claimed subject matter and, therefore, constitutes an
anticipation. We recognize that the claims on appeal recite that the purpose of the
treatment is to prevent prostatic carcinoma in patients that are asymptomatic for prostatic
cancer. However, “[I]t is a general rule that merely discovering and claiming a new benefit
of an old process cannot render the process again patentable.” In re Woodruff, 919 F.2d
1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
(2) Claims 1 through 8 are rejected under 35 U.S.C. § 102(b). In support of this
rejection we rely upon EP’383 and Stedman.
EP’383 describes a method of treating patients with benign prostate hypertrophy
that comprises administering a therapeutically effective amount of a 17$-N-
monosubstituted-carbamoyl-4-aza-5"-androst-1-en-3-one compound of Formula I which
is within the scope of the formula recited in claim 1 on appeal. EP’383 also describes that
the compound can be 17$-(N-tert-butylcarbamoyl)-4-aza-5"-androst-1-en-3-one as
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