Appeal No. 2001-1043 Page 6
Application No. 08/734,738
OTHER MATTERS
We note that the rejection of the composition claims on appeal was made
in the context of the use of the composition disclosed in the specification—the
treatment of urinary incontinence. But the treatment of urinary incontinence is
intended use, and does not serve to limit the claimed compositions.
The panel has discovered several references pertinent to the patentability
of the claimed compositions in a brief search of only the patent literature. The
first reference is U.S. Patent No. 4,898,860, to Musacchio et al. That reference
discloses that an agent such as atropine, one of the claimed anticholinergics, is
not a potent competitor of [3H]dextromethorphan binding. See Musacchio,
column 13, line 67-column 14, line 3. The competition study would read on the
composition of claim 24 because the composition is not limited to any particular
form, the competition study would require the atropine and the
dextromethorphan to be present in the same solution, and the use of
“comprising” allows the presence of other components in the composition. The
second reference, U.S. Patent No. 4,316,888, to Nelson, specifically discloses a
pharmaceutical composition comprising dextromethorphan in combination with
an anticholinergic, such as atropine. See, e.g., Column 1, line 61-column 2, line
6.
Upon receipt of this application, the examiner may want to address the
patentability issues raised in this section, as well as searching for addressing the
composition per se, and not in the context of its intended use.
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