Rasmusson v. SmithKline Beecham Corp.

Opinion

 [***1298]   [*1320]  BRYSON, Circuit Judge.

This is an appeal from an interference proceeding before the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office ("PTO"). At issue in the interference proceeding were a set of claims from U.S. Patent Application Serial No. 08/460,296 ("the '296 application"), and another set of claims from U.S. Patent Nos. 5,637,310 ("the '310 patent") and 5,496,556 ("the '556 patent") and their corresponding reissue applications, U.S. Patent Application Serial Nos. 09/964,383 ("the '310 reissue [**2]  patent application") and 09/984,083 ("the '556 reissue patent application"). Gary H. Rasmusson and Glenn F. Reynolds (collectively, "Rasmusson") are the inventors named on the '296 application. SmithKline Beecham Corporation is the assignee of the '310 and '556 patents and the corresponding reissue patent applications. The Board of Patent Appeals and Interferences held that Rasmusson was not entitled to the benefit of a priority date based on certain previous applications and that Rasmusson could not defeat the priority date accorded to SmithKline's patents and reissue applications. Because that decision is supported by substantial evidence and is not contrary to law, we affirm. The Board also held that SmithKline's patents and reissue patent applications were not anticipated by a European patent application, EP No. 285383 ("EP '383"). The Board based that ruling on its conclusion that EP '383 was not enabled. We reverse that aspect of the Board's decision and find that EP '383 was enabled for purposes of anticipation. We therefore remand this case to the Board for a determination of the effect of that application on the claims of SmithKline's patents and reissue patent applications [**3]  and Rasmusson's '296 application.

This case relates to a method of treating a type of prostate cancer by administering a chemical compound called finasteride. Finasteride inhibits the production of an enzyme known as 5#lsqbαrsqb#-reductase ("5#lsqbαrsqb#R"), which is responsible for converting the hormone testosterone to dihydrotestosterone ("DHT"). Both testosterone and DHT are in the class of hormones known as androgens, which bind to receptors on certain target cells and initiate a chain of biological events that are important in the expression of male sex characteristics. DHT is known to be a more potent androgen than testosterone, and high levels of DHT are associated with prostate cancer. As a result, numerous attempts have been made to decrease DHT levels by seeking out inhibitors of the 5#lsqbαrsqb#R enzyme.

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