Appeal 2007-2254
Application 10/383,115
amounts suggested by Amin would inherently be ‘effective to inhibit or
reduce amyloid plaque formation’” (supra 5, emphasis added). In this
regard, I note that “[o]bviousness and inherency are different issues. ‘That
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).
As the majority recognizes “Amin does not specifically describe
administering the tetracycline compounds ‘in an amount effective to inhibit
or reduce amyloid plaque formation,’ as recited in claim 1” (supra 4).
Instead, Amin teaches the use of tetracycline compounds within the scope of
formula I to treat inflammatory and other diseases where NO production or
iNOS expression or activity play a role (Amin, col. 7, ll. 5-20). As discussed
above, Amin teach that Alzheimer’s disease is a disease in which NO
appears to be involved. Thus, as the majority correctly points out “Amin
provides motivation to administer tetracycline compounds, such as the ones
recited in claim 1, to treat Alzheimer’s disease” (supra 5). Therefore,
notwithstanding Amin’s lack of a specific teaching to inhibit or reduce
amyloid plaque formation in Alzheimer’s patients by administering a
tetracycline compound of formula I, “[i]t is a general rule that merely
discovering and claiming a new benefit of an old process cannot render the
process again patentable. Verdegaal Bros., Inc. v. Union Oil Co. of Calif.,
814 F.2d 628, 632-33, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484
U.S. 827 (1987); Bird Provision Co. v. Owens Country Sausage, Inc., 568
F.2d 369, 375, 197 USPQ 134, 139 (5th Cir. 1978).” In re Woodruff, 919
F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
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