Appeal No. 2002-0783 Page 8
Application No. 09/268,957
claims 3 through 22 "reads on" an effective amount of this water soluble drug known in
the art at the time the invention was made.
In section E of his Appeal Brief, applicant argues claim 23 separately. It is not
entirely clear to us, however, what limitation in claim 23 applicant would rely on to
patentably distinguish over the prior art. It may be that applicant would predicate
patentability on the recitation "suitable for the treatment of psychogenic impotence"
which appears in claim 23 but not claim 1. See the Appeal Brief, paragraph bridging
pages 11 and 12 ("Here, even if the Bell et al. Patents are deemed to be properly
combinable, arguendo, with the El-Rashidy et al. Patent, there is no indication
whatsoever that out of the myriad of disclosed compounds one of ordinary skill would
turn to sildenafil in the specific controlled release, sublingual composition for the
successful treatment of psychogenic impotence" (emphasis added)). If this is so, the
argument lacks merit. Again, at the time the invention was made, the oral use of the
citrate salt of sildenafil had been approved by the U.S. Food and Drug Administration
(FDA) for the treatment of male erectile dysfunction (Background of the Invention
portion of applicant's specification, page 2, lines 30 through 33).
Conclusion
In conclusion, for reasons set forth in the body of this opinion, we affirm the
rejection of claims 1 and 3 through 23 under 35 U.S.C. § 103(a) as unpatentable over
the combined disclosures of El-Rashidy and the above-cited Bell patents.
The examiner's decision is affirmed.
No time period for taking any subsequent action in connection with this appeal
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