By
Donald Zuhn —

Earlier
this month, the Federal Circuit, in In re
Arora, affirmed a decision of the Board of Patent Appeals and Interferences
affirming the rejection of claims 11-16 of Appellant Arun Arora's application
as being obvious in view of U.S. Patent Nos. 6,978,286 and 5,934,273.  Claims 11-16 of Dr. Arora's application
relate to a method for converting drug dosages to prevent overdose.  Representative claim 11 recites:

11.  A method for converting drug dosages to
prevent overdose, comprising the steps of:
    defining
a common medication reference range;
    assigning
dosages of first and second drugs to respective values within the common
medication reference range;
    prescribing
a particular dosage of the first drug;
    identifying
a value within the common medication reference range for the particular dosage;
and
    permitting
prescription fulfillment with a dosage of the second drug which corresponds
[to] the dosage of the first drug using the common medication reference range.

On
appeal, Dr. Arora argued that the '286 and '273 patents fail to disclose or
suggest the steps of "assigning dosages of first and second drugs to
respective values within the common medication reference range" or "permitting
prescription fulfillment with a dosage of the second drug which corresponds
[to] the dosage of the first drug using the common medication reference range."

In
an opinion issued per curiam, the
panel disagreed, stating that "substantial evidence supports the Board's
finding that the references teach those two limitations."  In response to Dr. Arora's argument
that '286 patent "does not teach 'assigning dosages' of two different
drugs to values in the same reference range, i.e., the claimed 'common
medication reference range,'" the panel states that "[e]ven if [the
'286 patent] does not explicitly disclose conversion to a common reference
range, . . . the Board found that a person of ordinary skill in the art would
appreciate that dosages should be assigned to respective values in a common reference
range based on [the '273 patent's] teaching that equipotent doses of different
medications should be directly compared."  In response to Dr. Arora's argument that the '273 patent "should
be understood as limited to the narrow teaching that a smaller amount of a drug
is needed when delivered via [the '273 patent's] inventive dry powder inhaler
instead of a metered dose inhaler," the panel states that "[i]t is
well-settled . . . that a prior art reference must be considered for all that
it teaches to those of ordinary skill in the art, not just the embodiments
disclosed therein," and that the '273 patent "teaches the broad
principle that different drugs are equipotent at different dosages."  The panel therefore concluded that "[s]ubstantial
evidence supports the Board's findings regarding the teachings of [the '273
patent], and the Board did not err in concluding that a person of ordinary
skill in the art would apply those teachings to [the '286 patent] to convert
dosages of two different drugs into a 'common medication reference range,'"
and affirmed the Board's decision affirming the rejection of the claims.

In re Arora (Fed. Cir. 2010)
Nonprecedential
disposition
Panel:
Circuit Judges Gajarsa, Plager, and Dyk
Per curiam opinion