Appeal No. 2001-1294 Page 6
Application No. 08/473,667
composition3. The examiner, however, failed to identify any teaching in the
combination of prior art of a composition comprising a brain cholinergic
neurocortical stimulating amount of anabaseine or DMAB-anabaseine. Stated
differently, the examiner has not demonstrated that the claimed composition is
“old.”
While the examiner asserts (id.), “the quantitative values of the prior art
and the instant claims are identical,” the examiner provides no factual evidence
to support this position. The “quantitative values” for the instant claims are
defined at page 13 of appellants’ specification, wherein appellants define the
term “therapeutically effective” as “the amount of nicotinic receptor agent used is
of sufficient quantify to increase brain cholinergic transmission.” According to
appellants’ specification (id.), depending on the “age, condition, sex, and extent
of the disease in the patient” this amount ranges from 1 µg/kg to about 1000
µg/kg. In contrast, Meyer used an anabaseine composition varying in
concentration between 1 to 100 µM on rat brain minces, of undisclosed weight,
and failed to observe an effect on presumably intact cholinergic interneurons.
See e.g., Meyer, page 1761, first column and Table 3. Therefore, it is unclear to
this Merits Panel how the examiner arrived at her unsupported conclusion that
the “quantitative values of the prior art and the instant claims are identical.”
Appellants further argue (Brief, bridging paragraph, pages 10-11),
Swanson “is a review of the molecular pharmacology of anatoxin-a compounds
3 In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) (“The discovery of a
new property or use of a previously known composition, even when that property and use are
unobvious from the prior art, can not impart patentability to claims to the known composition.”
(Citations omitted)).
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