Appeal No. 2004-1478 Page 5
Application No. 10/099,356
Other Issues
During prosecution, Appellants submitted a copy of an International Search
Report listing numerous references that were each individually deemed to render
certain claims unpatentable. To take just one example, the International Search Report
lists PCT patent application WO 92/22457 (Morris) as an “X” category document; i.e., a
document that renders the claims lacking in novelty or inventive step.
Morris discloses treatment of osteoporosis by administration of estrogens in
combination with ipriflavone. See the abstract. See also pages 5-6: “The effect of the
combined administration of ipriflavone and estrogens were shown in a one year study
carried out in corresponding groups of patients, in physiological menopause for 12-24
months. . . . Each group was treated according to a different therapeutic scheme: . . .
group 4: CE [conjugated estrogens] 0.15 mg/day + ipriflavone 600 mg/day.” Morris
discloses that “in the group of patients treated with Ip+CE 0.15 [i.e., ipriflavone plus 0.15
mg/day conjugated estrogens, see page 7] an effective control of the bone mass is
attained after 6 months.” Page 8.
We are unable to discern any difference between the method defined by instant
claim 12 and the method described by Morris in 1992, well before the filing date of the
present application. We have not reviewed any of the other references cited in the
International Search Report but they may also be more applicable to the present claims
than Plunkett.
Thus, it appears to us that the examiner has not applied the most relevant prior
art. We encourage the examiner, on return of this application, to review the prior art of
record. If the examiner concludes that the record contains prior art that anticipates or
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