Appeal No. 2005-0838
Application No. 10/174,414
the compounds set forth therein; and (ii) the methods for prophylaxis of said conditions
and disorders are the same as those disclosed for their treatment, said methods of
prophylaxis are manifestly enabled. The appellants argue that the disclosures in the
specification with respect to (i) methods of making the compounds of formula (I);
(ii) how to formulate the compounds of formula (I) into pharmaceutical compositions;
(iii) how to make pharmaceutical compositions for various routes of administration; and
(iv) methods of administering pharmaceutical compositions comprising the compounds
of formula (I), would have enabled one skilled in the art “to make and use” the claimed
method. Brief, pp. 4-5. We find these arguments unpersuasive.
The claimed method is not directed to a method of treating inflammatory
conditions and immune disorders associated with the infiltration of leukocytes, but to the
prevention of said conditions and disorders. A method of treating the referenced
conditions and disorders can be accomplished by merely alleviating one or more
symptoms. Thus, the examiner has indicated (by allowing claims) that the identification
of the subjects in need of treatment of the claimed conditions and disorders, and the
administration of the pharmaceutical compositions described in the specification does
not require undue experimentation. See U.S. Patent No. 6,355,646, claims 12, 14 and
15. But, as evinced by the numerous references provided by the examiner, prevention
of the claimed diseases and disorders stands on a different footing. Prevention involves
“attacking” the underlying cause of each of the claimed conditions and
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