Ex Parte Gormley et al - Page 7



              Appeal No. 2004-0543                                                                  Page 7                
              Application No. 10/010,678                                                                                  
              while Athe active ingredient for use in the treatment of benign prostatic hypertrophy can                   
              be administered in a wide variety of therapeutic dosage forms in conventional vehicles                      
              for systemic administration, as, for example, by oral administration in the form of tablets,                
              capsules, solutions or suspensions, of [sic] by intravenous injection@ (id.).                               
                     We find (1) that Rasmusson=s use of the term Atopical@ administration does not                       
              include systemic administration, and therefore, does not include Atransdermal@                              
              administration; and (2) that none of the Avehicles for systemic administration@ described                   
              in the reference are suitable for transdermal administration.  Therefore, we conclude                       
              that Rasmusson does not anticipate the claimed invention, and the rejection of claims                       
              28, 29 and 31-34 under 35 U.S.C. ' 102(b) is reversed.                                                      
              Unpatentability over Rasmusson and Goldman                                                                  
                     Claims 30 and 35-37 stand rejected under 35 U.S.C. ' 103(a) as unpatentable                          
              over Rasmusson and Goldman.  The underlying premise of the rejection is that                                
              Rasmusson describes transdermal administration of a 5α-reductase 2 inhibitor, and                           
              lacks only a description of a transdermal skin patch; the examiner relies on Goldman to                     
              make up this deficiency.                                                                                    
                     As discussed above, we do not agree that Rasmusson describes transdermal                             
              administration of a 5α-reductase 2 inhibitor.  On the other hand, we agree with the                         
              examiner that Goldman is relevant to the claimed invention, but for reasons somewhat                        
              different than those of the examiner.  Therefore, we vacate the examiner=s rejection of                     
              claims 30 and 35-37 and enter the following new ground of rejection under the                               
              provisions of 37 CFR ' 41.50(b).                                                                            
                            NEW GROUND OF REJECTION UNDER 37 CFR ' 41.50(b)                                               
                     Claims 28-37 are rejected under 35 U.S.C. ' 103(a) as unpatentable over                              
              Goldman.  Claim 28 is directed to a method of treating androgenic alopecia comprising                       


Page:  Previous  1  2  3  4  5  6  7  8  9  10  Next 

Last modified: November 3, 2007