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 comprisingPage: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007