Appeal No. 2006-3200 Page 8
Application No. 10/196,428
rheumatoid arthritis. Brief, page 7, Luchetti “show[s] a correlation between
elevated PTX3 gene expression and rheumatoid arthritis. . . .” Therefore, the
evidence of record supports the finding that Chao’s rheumatoid arthritis patient
population is the same as the patient population in Appellants’ claimed invention.
In this regard, we remind Appellants that “[i]t is a general rule that merely
discovering and claiming a new benefit of an old process cannot render the
process again patentable.” In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d
1934, 1936 (Fed. Cir. 1990). On this record, Appellants have simply discovered
that by practicing Chao’s method of treating rheumatoid arthritis patients with a
composition comprising an HMG-CoA reductase suppressor, such as
pravastatin, PTX3 gene expression is suppressed. At best, Appellants have
recognized the underlying mechanism through which Chao’s method operates.
See e.g., Specification, page 2,
[The] PTX3 gene is constantly expressed in synovial cells of a
rheumatoid arthritis patient and [ ] this expression is suppressed by
inte[r]feron-γ (IFN-γ) or transforming growth factor-β (TGF-β) . . . .
Moreover, PTX3 also takes part in a disorder via a complement
pathway in an autoimmune disease, especially rheumatoid arthritis,
because it binds to C1q, one of complement components, to
activate the complement pathway . . . .
Suppression of PTX3 gene expression, therefore,
suppresses worsening of an autoimmune disease, especially
rheumatoid arthritis and further, results in its treatment.
In our opinion, the evidence of record does not support Appellants’ assertion that
the discovery of the underlying mechanism through which Chao’s method
operates, or the new benefit of Chao’s method is nonobvious in view of the
combination of prior art relied upon.
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