Appeal No. 2004-2170 Page 4
Application No. 09/901,429
outcome of the treatment is the same regardless . . . Since [the] same therapeutic
modality [is] taught and the same patient is also used in the treatment, there is no
difference between the claimed subject matter and the conventional treatment” (id.,
page 5).
On the surface, the examiner’s position has merit. On cursory review, Herndon
does appear to describe all of the manipulative steps required by the claims, and it is
well established that merely discovering and claiming a new benefit of an old process
cannot render the process again patentable. See In re Woodruff, 919 F.2d 1575, 1577,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Thus, the mere fact that “Herndon [ ] did not
teach or suggest [that] treatment with $-adrenergic antagonists had an inherent feature
of improving skeletal muscle protein kinetics” (Brief, page 9) would not “render the
process again patentable.”
Nevertheless, we find that the examiner has not established that Herndon’s
method anticipates all of “the critical elements” (Answer, page 4) of the claims. As
always, “[a]nalysis begins with a key legal question – what is the invention claimed?”
since “[c]laim interpretation . . . will normally control the remainder of the decisional
process,” Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68, 1 USPQ2d
1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987).
To meet the requirements of the claims on appeal, a “pharmacologically effective
dose” of a beta-adrenergic antagonist must be a dose effective to improve skeletal
muscle protein kinetics in a burn patient, as compared with an untreated patient.
According to the present specification, a beta-adrenergic antagonist (propranolol)
administered for two weeks, “improved muscle protein net balance from baseline [ ] and
as compared with non-treated controls” (specification, page 23). After four weeks of
treatment, “[a]n acceleration in protein synthesis in propranolol treated subjects was
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007