Appeal No. 2006-2325 Page 4
Application No. 10/340,980
According to the examiner (Answer, page 4), the “obese[ ]2 patients”
treated in Partridge overlap “the dieting mammal” required by appellant’s claimed
invention because according to the examiner “obese patients are generally on [a]
diet.” There is simply no evidence on this record to support this assertion. In
addition, appellant points out (Brief, page 4) that during prosecution the examiner
interpreted the term “dieting mammal” as a person or animal “whose diet is
limited due to that individuals personal preferences.” Cf. Final Rejection, mailed
September 9, 2004, page 3, where the examiner interprets appellant’s claim term
“dieting mammal” as “a person or animal with special or usual preferences of
what he/she eats and drinks, the subjects being treated by Patridge et al.
encompasses [this] same population.” Again there is no evidence on this record
to support this assertion.
The examiner may be correct in that it is theoretically possible that some
of Partridge’s patients take 7-oxo DHEA while eating and drinking sparingly with
the intent to lose weight. However, since Partridge fails to disclose the
administration of 7-oxo DHEA together with a dieting regime, the examiner’s
argument is no more than an unsubstantiated theoretical possibility, which is
insufficient to support the anticipation rejection of record. Cf. Jansen v. Rexall
Sundown, Inc., 342 F.3d 1329, 1344, 68 USPQ2d 1154, 1159 (Fed. Cir. 2003)
(“a theroretical possibility or ‘metaphysical doubt,’ … is insufficient to create a
genuine issue of material fact.”)
2 The Partridge patent mentions the term “obese” twice, once each in claims 12 and 17. In both
instances, Partridge fails to indicate that the “obese subject” is on any type of diet or is eating or
drinking sparingly with the intent to lose weight.
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