Appeal No. 2004-1212 Page 4
Application No. 09/316,624
claim. Cf. Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368,
1375, 58 USPQ2d 1508, 1513 (Fed. Cir. 2001) (“[T]he expression ‘an
antineoplastically effective amount’ . . . [is an] expression of intended result [that]
essentially duplicates the dosage amounts recited in the claims. . . . The express
dosage amounts are material claim limitations; the statement of the intended
result of administering those amounts does not change those amounts or
otherwise limit the claim.”).
2. Anticipation
The examiner also rejected claims 1-4 as anticipated by Kochel, reasoning
that Kochel discloses that a composition of low molecular weight peptides (8-15
kD), derived from Reticulose® by filtration, is useful in treating rheumatoid
arthritis. See the Examiner’s Answer, page 4. The examiner concluded that
Kochel sets forth products derived from the known product
Reticulose® and methods of using that product, as claimed. The
methods Kochel used to produce the composition, as well as the
methods of treating rheumatoid arthritis, are very similar to those of
the claimed invention. Whether the products resulting from the
process are the same, is not clear, and the Office does not have
the facilities to perform such comprehensive analyses.
Id., page 5.
Appellant argues that the record shows that Product R is different from
Reticulose®. Specifically, Appellant cites Friedland, a commonly assigned U.S.
Patent, which compares the properties of Product R and Reticulose®. (Friedland’s
method of making Product R is the same as that disclosed on pages 10-11 of the
instant specification.)
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