Appeal No. 2006-3200 Page 7
Application No. 10/196,428
additive and an effective amount of a HMG-CoA reductase inhibitor is
administered to a subject suffering from rheumatoid arthritis. As we understand
Appellants’ specification (paragraph bridging pages 9-10), an effective amount of
a HMG-CoA reductase inhibitor is 0.1 to 100 mg. Accordingly, not only does
Chao teach the treatment of the same patient population, Chao teaches the use
of the same effective dose of HMG-CoA reductase inhibitor.
Therefore, Chao teaches the same method step as required by
Appellants’ claimed invention. In our opinion, by administering the same
effective dose of the same HMG-CoA reductase inhibitor to the same patient
population9, PTX3 gene expression will necessarily be suppressed. Therefore,
Chao alone anticipates Appellants’ claimed invention. Nevertheless, we
recognize that the rejection before us on appeal is an obviousness rejection and
“[t]hat which may be inherent is not necessarily known. Obviousness cannot be
predicated on what is unknown.” In re Spormann, 363 F.2d 444, 448, 150 USPQ
449, 452 (CCPA 1966).
However, as we understand it, Appellants’ preamble simply recites a new
benefit of the method taught by Chao, specifically that PTX3 gene expression
can be suppressed by performing Chao’s method. As Appellants recognize,
Luchetti establishes a nexus between elevated PTX3 gene expression and
9 Appellants fail to direct our attention to any evidence on this record, and we find none, that
would suggest that the patient population suffering from rheumatoid arthritis as set forth in their
claim is different from the rheumatoid arthritis patient population set forth in Chao. In addition, we
recognized Appellants’ assertion that the phrase “a subject in need thereof” is properly construed
to require that the compound be administered to a subject with a recognized need to treat or
prevent the claimed disorder. Brief, page 9. Claim 1 specifically states that “said subject in need
thereof suffers from rheumatoid arthritis.” Accordingly, we disagree with Appellants’ intimation
that the phrase “a subject in need thereof” refers to anything other than a subject suffering from
rheumatoid arthritis.
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