Appeal No. 2002-0455 6
Application No. 09/123,620
recognized van’t Riet’s compounds as, in some sense, antioxidants, the
examiner has not shown that a skilled artisan would have reasonably expected
them to effectively inhibit NF-κB if administered in accordance with the instantly
claimed process.
Other Issues
Appellant has recently been issued U.S. Patent 6,248,782. Claim 2 of that
patent appears to be directed to a method of treating retroviral infection by
administering to a mammal the same compounds as are recited in the instant
claims. The instant specification discloses that NF-κB can be activated by, inter
alia, virus infection. See pages 1 and 6-7. See also page 2: “[I]nhibition of
NF-κB could also play a role in the treatment of HIV-1 and other viral agents.”
Upon return of this case, the examiner should consider whether the
treatment of virus infection that is claimed in the ‘782 patent is merely a species
of the instantly claimed treatment of NF-κB activation. If so, a rejection for
obviousness-type double patenting may be appropriate. See Verdegaal Bros.
Inc. v. Union Oil Co., 814 F.2d 628, 632, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987)
(Discovery of a property inherent to a prior art process does not render that
process patentable, even if the prior art did not appreciate the property.); Eli Lilly
& Co. v. Barr Labs., Inc., 251 F.3d 955, 970, 58 USPQ2d 1869, 1879-80
(Fed. Cir. 2001) (holding that a method of blocking serotonin uptake by
administering a compound was not patentably distinct from a method of treating
anxiety by administering the same compound).
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