Ex Parte Zenk

Board of Patent Appeals and Interferences

Aug 28, 2006

10340980 (B.P.A.I. Aug. 28, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN ZENK
__________

Appeal No. 2006-2325
Application No. 10/340,980
__________

ON BRIEF
__________

Before SCHEINER, ADAMS, and LEBOVITZ, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1-9, which are all the claims pending in the
application.
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below:
1. A method of modulating the metabolism of a dieting mammal
comprising administration of a metabolic modulating agent to the
dieting mammal wherein the metabolic modulating agent is 7-oxo
DHEA or a pro-drug thereof incapable of in vivo conversion to
testosterone.

The references relied upon by the examiner are:
Partridge et al. (Partridge) 5,296,481 Mar. 22, 1994

Appeal No. 2006-2325 Page 2
Application No. 10/340,980

GROUND OF REJECTION
Claims 1-9 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Partridge.
We reverse.

DISCUSSION
Claims 1-9 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Partridge.

Claim Construction:

Appellant’s claims are drawn to a method of modulating the metabolism of
a dieting mammal. See e.g., claim 1. The method comprises administering 7-
oxo DHEA1 to the dieting mammal. Id. As set forth above, appellant’s
specification (paragraph 5) defines “dieting” as “eating and drinking sparingly with
the intent to lose weight.” Therefore, as we understand it, appellant’s claims are
drawn to a method comprising administering 7-oxo DHEA to a mammal who is
eating and drinking sparingly with the intent to lose weight.

Partridge:
Appellant concedes that Partridge teaches the administration of 7-oxo
DHEA to a human subject with the intent to control weight gain or promote

1 Or a pro-drug thereof incapable of in vivo conversion to testosterone. See e.g., claim 1.

Appeal No. 2006-2325 Page 3
Application No. 10/340,980
weight loss. Brief, bridging paragraph, pages 3-4. In addition, appellant does not
dispute the examiner’s assertion (Answer, bridging sentence, pages 3-4) that
Partridge teaches the administration of 7-oxo DHEA to a mammal in the same
amount as is required by appellant’s invention.
Accordingly, as we understand it, the sole issue before us on appeal is
whether the patient population in Partridge describes a patient population
species/genus required by appellant’s claimed invention. Stated differently, the
issue is not whether the administration of 7-oxo DHEA will modulate the
metabolism of a mammal who is “eating and drinking sparingly with the intent to
lose weight.” Instead, the issue is whether Partridge discloses the administration
of 7-oxo DHEA to a mammal who is “eating and drinking sparingly with the intent
to lose weight.” Cf. Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368,
1378, 77 USPQ2d 1321, 1328 (Fed. Cir. 2005).
According to appellant (Brief, page 4), Partridge’s patient population is
different than the patient population required by the instant claims. Specifically,
appellant asserts (id., emphasis removed) that paragraph 5 of their specification
defines “dieting’ . . . as ‘eating and drinking sparingly with the intent to lose
weight’.” In contrast, appellant points out (Brief, page 4), the examiner has taken
the position “that a ‘dieting mammal’ includes humans whose diet is limited due
to that individual’s personal preferences.” According to appellant (Brief, page 4),
the examiner’s definition of a dieting mammal is different from the definition
provided in paragraph 5 of appellant’s specification, thus Partridge does not
anticipate the claimed invention.

Appeal No. 2006-2325 Page 4
Application No. 10/340,980
According to the examiner (Answer, page 4), the “obese[ ]2 patients”
treated in Partridge overlap “the dieting mammal” required by appellant’s claimed
invention because according to the examiner “obese patients are generally on [a]
diet.” There is simply no evidence on this record to support this assertion. In
addition, appellant points out (Brief, page 4) that during prosecution the examiner
interpreted the term “dieting mammal” as a person or animal “whose diet is
limited due to that individuals personal preferences.” Cf. Final Rejection, mailed
September 9, 2004, page 3, where the examiner interprets appellant’s claim term
“dieting mammal” as “a person or animal with special or usual preferences of
what he/she eats and drinks, the subjects being treated by Patridge et al.
encompasses [this] same population.” Again there is no evidence on this record
to support this assertion.
The examiner may be correct in that it is theoretically possible that some
of Partridge’s patients take 7-oxo DHEA while eating and drinking sparingly with
the intent to lose weight. However, since Partridge fails to disclose the
administration of 7-oxo DHEA together with a dieting regime, the examiner’s
argument is no more than an unsubstantiated theoretical possibility, which is
insufficient to support the anticipation rejection of record. Cf. Jansen v. Rexall
Sundown, Inc., 342 F.3d 1329, 1344, 68 USPQ2d 1154, 1159 (Fed. Cir. 2003)
(“a theroretical possibility or ‘metaphysical doubt,’ … is insufficient to create a
genuine issue of material fact.”)

2 The Partridge patent mentions the term “obese” twice, once each in claims 12 and 17. In both
instances, Partridge fails to indicate that the “obese subject” is on any type of diet or is eating or
drinking sparingly with the intent to lose weight.

Appeal No. 2006-2325 Page 5
Application No. 10/340,980
On reflection, we find that the examiner failed to meet his evidentiary
burdun of establishing a prima facie case of anticipation. Accordingly, we
reverse the rejection of claims 1-9 under 35 U.S.C. § 102(b) as being anticipated
by Patridge

REVERSED

)
Toni R. Scheiner )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
Donald E. Adams ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
Richard M. Lebovitz )
Administrative Patent Judge )

Appeal No. 2006-2325 Page 6
Application No. 10/340,980
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