Appeal No. 2007-1080
Application No. 10/790,658
that the inhibitory activity of desmethyl-selegiline is “nearly equipotent” to
L-deprenyl, the Examiner should consider whether it would have been
obvious to have utilized desmethyl-selegiline to treat immune system
dysfunction associated with aging or to improve the immune response, as
taught by Milgram for the structurally related L-deprenyl.
Milgram also shows that L-deprenyl improves T lymphocyte function
(Example 2, cols. 7-8). AIDS is well-known to be associated with T
lymphocyte dysfunction. In view of Milgram’s teaching, the Examiner
should determine whether it would have been obvious to have treated AIDS
with desmethyl-selegiline as claimed in instant claims 37 and 60.
Although Milgram does not disclose that immune dysfunction in
aging animals is associated with a decline in gamma-interferon as required
by claim 26 and others, the disorders are the same. In view of the identity of
the disorders, the Examiner should consider whether it would be reasonable
to presume that immune system decline associated with aging, as taught by
Milgram, would be accompanied by a reduction in gamma-interferon levels.
The Examiner should make the same determination for the subject matter of
claims 37, 39, 60, and 62.
Milgram also does not teach that L-deprenyl “leads to an increase in
gamma-interferon production” as recited in claim 26 and others. However,
“[m]ere recognition of latent properties in the prior art does not render
nonobvious an otherwise known invention.” In re Baxter Travenol Labs.,
952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991). See also In re
Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990)
(“It is a general rule that merely discovering and claiming a new benefit of
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