Appeal No. 2006-2325 Page 3
Application No. 10/340,980
weight loss. Brief, bridging paragraph, pages 3-4. In addition, appellant does not
dispute the examiner’s assertion (Answer, bridging sentence, pages 3-4) that
Partridge teaches the administration of 7-oxo DHEA to a mammal in the same
amount as is required by appellant’s invention.
Accordingly, as we understand it, the sole issue before us on appeal is
whether the patient population in Partridge describes a patient population
species/genus required by appellant’s claimed invention. Stated differently, the
issue is not whether the administration of 7-oxo DHEA will modulate the
metabolism of a mammal who is “eating and drinking sparingly with the intent to
lose weight.” Instead, the issue is whether Partridge discloses the administration
of 7-oxo DHEA to a mammal who is “eating and drinking sparingly with the intent
to lose weight.” Cf. Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368,
1378, 77 USPQ2d 1321, 1328 (Fed. Cir. 2005).
According to appellant (Brief, page 4), Partridge’s patient population is
different than the patient population required by the instant claims. Specifically,
appellant asserts (id., emphasis removed) that paragraph 5 of their specification
defines “dieting’ . . . as ‘eating and drinking sparingly with the intent to lose
weight’.” In contrast, appellant points out (Brief, page 4), the examiner has taken
the position “that a ‘dieting mammal’ includes humans whose diet is limited due
to that individual’s personal preferences.” According to appellant (Brief, page 4),
the examiner’s definition of a dieting mammal is different from the definition
provided in paragraph 5 of appellant’s specification, thus Partridge does not
anticipate the claimed invention.
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