Appeal No. 2006-0730 Page 7
Application No. 10/164,863
the desired effect of the claimed method.” Apparently, the examiner is
misapprehends appellants’ claimed invention. The claimed invention is not a
method of treating normal females with no reproductive disorders.3 To the
contrary, the claimed method is drawn to “[a] method of treating reproductive
disorders involving abnormal levels of lipids in a female mammal mediated by
SR-BI activity. . . .” See e.g., claim 1. Accordingly we are not persuaded by the
examiner’s argument.4
In addition, we recognize the examiner’s assertion (Answer, page 4,
emphasis removed) that it would “be unpredictable to one of ordinary skill in the
art how [sic] to alter fertility or treat any and all reproductive disorders simply by
altering lipoprotein, HDL, LDL, or cholesterol levels in a mammal, especially
since fertility and reproductive disorders all have a separate mechanism of
action. . . .” We do not find this argument persuasive. Contrary to the examiner’s
assertion, appellants are not claiming the treatment of “any and all reproductive
disorders.” Instead, appellants are claiming “[a] method for treating reproductive
disorders involving abnormal levels of lipids in a female mammal mediated by
SR-BI activity.” In our opinion, the examiner provides no reasonable basis to
conclude that treating the reproductive disorders set forth in
3 See e.g., Brief, page 11, wherein appellants assert “[i]f an individual has completely normal
cholesterol and lipoprotein levels, there would be no reason based on this application to treat the
individual with a drug to normalize their cholesterol or lipoprotein.”
4 We are also not persuaded by the examiner’s unsupported assertion that “it would generally be
expected that numerous females who have reproductive disorders would also suffer from high
cholesterol” or the conclusions he would have us draw from this unsupported assertion. Answer,
page 6.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007