Appeal 2007-0852
Application 09/919,195
claimed limitations, it anticipates. In re King, 801 F.2d 1324, 1326, 231 USPQ
136, 138 (Fed. Cir. 1986).
The Examiner finds:
Ghaffari discloses compounds that . . . RAR modulation that
affects the lung. Cong discloses RAR modulation in its role in the
development of the lung. Xu discloses modulation of RAR for lung
problems. Wu discloses RAR modulation in lung problems. Cao
discloses RAR modulation in the lung tissue. Song discloses RAR
modulation in the lung tissue. Yu teaches RAR modulation and its
link to the lungs. These all teach RAR modulation and lung tissues.
These compounds would inherently encompass the instantly claimed
invention.
(Answer 9).
Appellants contend that none of the cited references discloses all the
claimed elements or limitations. (Br. 16). Appellants further argue
these claims require in the method of treatment or prevention the
use of a compound that is an RARβ antagonist, and not a modulator
of RXR receptors. (see the definition of "specific RAR modulating
activity" on page 5 lines 17 - 24 of the specification) nor a
modulator of either RARα or RARγ receptors. . . . The Examiner
asserts that these elements must be inherent in the compounds used
in the references. For the reason explained below the assertion of
inherency is in serious error. There is a significant difference
between just being a "retinoid", namely a compound having some
modulating activity on any or all retinoid receptors and being
selective to RAR receptors (not active on RXR receptors) and then
being further selective by acting as an antagonist of RARß and
being inactive on either RARα or RARγ receptors.
(Br. 16).
We agree with Appellants that the Examiner has failed to set forth a prima
facie case of anticipation based on inherency. The claims require administering an
RARβ antagonist having specific RAR modulating activity to said mammal in an
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