Appeal No. 2004-1478 Page 4
Application No. 10/099,356
When considered as a whole, Plunkett does not support the examiner’s rejection.
It is true that Plunkett teaches that “[e]strogen alone, given in small doses on a
continuous basis, is effective for most patients. Column 2, lines 8-10. Plunkett does
not, however, define what dosage was considered “small”. In addition, Plunkett goes on
to explain that using estrogen alone has serious drawbacks. See column 2, lines 11-21.
Plunkett teaches that these drawbacks can be avoided by administering estrogen
in combination with a progestogen, and discloses that co-administration of both agents
has advantages over administration of estrogen alone. We agree with Appellants that
Plunkett therefore teaches away from administering estrogen without concomitant
administration of a progestogen, as required by claim 12.
We also agree that Plunkett does not suggest the dosage range recited in claim
12. The examiner relies on Plunkett’s disclosure that estrogen should be used in the
dosage range of 0.005 to 2.5 mg/day (column 3, line 66). However, that disclosure
must be viewed in combination with Plunkett’s Table 1A, which shows dosage ranges
for various estrogens that vary from a minimum dosage of 0.005 mg/day (see, e.g.,
column 5, line 15) to a maximum dosage of 2.5 mg/day(see, e.g., column 4, line 66).
Importantly, Plunkett discloses that the dosage range for “conjugated equine estrogen”
is 0.3 to 2.5 mg/day. Column 4, line 66. The examiner has pointed to nothing in the
reference that suggests the dosage range recited in claim 12 for the specific estrogen
recited in the claim.
Therefore, we agree with Appellants that Plunkett would not have suggested the
method defined by claim 12 to a person of ordinary skill in the art who had no
knowledge of the instant disclosure. The rejection under 35 U.S.C. § 103 is reversed.
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