In re Arora (Fed. Cir. 2010)

    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

Comments

[Courtenay]

Is this case interesting for what it does not address - patentability under section 101? I suppose the Patent Office would not have raised the issue, and so the court did not address it.

[Kevin E. Noonan]

Probably not a good idea for the court to raise the issue sua sponte. But this claim looks closer to the claim in Classen (which failed the Bilski test) than the claim in Prometheus (which did not)

[clothes online]

I suppose the Patent Office would not have raised the issue, and so the court did not address it.