Appeal No. 1998-0143
Application No. 08/268,177
Here, claims 11 and 12 identify the specific steps, i.e., implanting a defined
microsphere "comprising an effective neural fiber growth amount" of a neuro-active agent
into the central nervous system (CNS) of a patient; and, implanting defined microspheres
containing a pharmaceutically-active agent "in a therapeutically effective amount" within
the CNS of a patient, respectively, required to produce the claimed result, i.e., eliciting
neural fiber growth within the CNS and delivering a pharmaceutically-active agent directly
into astrocyte cells of the CNS, respectively. The examiner has not explained why such
claims should be treated as "means-plus-function" claims.
According to the examiner, the phrase "in need thereof" should be added after the
last word, "patient", to maintain proper means/function as "[t]his is merely an art
recognized standard in method claims reciting therapeutically effective amounts"
(Answer, p. 5). However, the examiner has not cited any legal precedent to support such
a rejection under § 112, ¶ 6.5
Consequently, the rejection of claims 11-15 under § 112, ¶ 6 is reversed.
II. Rejection of claims 11-15 under obviousness-type double patenting over claims 1-
11 of U.S. Patent No. 5,360,610
The proper inquiry for obviousness-type double patenting is to compare the claims
of the patent and of the application to see whether they are patentably distinct.
5 We agree with the general principle espoused in In re Lundberg, 244 F.2d 543, 547-48, 113
USPQ 530, 534 (CCPA 1979), that the sixth paragraph of section 112 does not exempt an applicant from
the requirements of the first two paragraphs of that section. However, none of the claims on appeal have
been rejected under either of the first two paragraphs of section 112.
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