Ex parte Pickar (BPAI Aug. 31, 2009)

Today, the Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Lebovitz, affirmed a rejection of claims relating to pharmaceutical composition comprising an estrogen and an additional compound.

At issue in the appeal was the proper scope of the term "pharmaceutical composition" as used in the claims. The Applicants argued that the anticipatory prior art reference that disclosed a composition administered to rats would not be understood by persons of ordinary skill in the art to be a "pharmaceutical composition" as described in the patent claims.

The BPAI noted that the phrase "pharmaceutical composition" was not defined in the specification, but the specification did "characterize[] the 'invention as a 'pharmaceutical composition' for 'alleviating the symptoms of post-menopausal syndrome in women' and 'to minimize undesirable side effects of estrogen treatment or therapy.'" However, since the claims did not recite "that the 'pharmaceutically effective amount' is for treating a specific disease, symptom, or condition, or a specific subject," the BPAI interpreted "the claims broadly to include amounts to achieve any discernable physiological effect in a subject produced by administration of the estrogen and [the additional] compound" and would "not interpret 'pharmaceutical composition' more narrowly than the claim language mandates."

Subsequently, the BPAI affirmed the Examiner's rejections of the claims at issue.

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