Appeal No. 95-2688
Application No. 07/845,560
DHEA blocks the effects of glucocorticoids on the immune system. See May at page 1628.
Accordingly, the stated rejection of the appealed claims is reversed.
OTHER ISSUES
In the answer at page 3, the examiner states that no new ground of rejection has
been imposed in the answer. The examiner then proceeds to raise a new rationale for the
rejection of the appealed claims based on the holding of In re Kerkhoven, 626 F.2d 848,
850, 205 USPQ 1069, 1072, (CCPA 1980) that it is prima facie obvious to combine two
compositions each of which is taught by the prior art to be useful for the same purpose, in
order to form a third composition which is to be used for the very same purpose.
According to the examiner, the instant claims define nothing more than the concomitant
use of two conventional epithelial damage medicaments. See the answer at page 5. As
evidence of the "conventional" individual use of DHEA and retinoids, the examiner refers
to the respective disclosures of Kligman at column 2, lines 19-30, and Orentreich '551 at
column 2, lines 56-63.
Appellant has not responded to the specific theory of rejection based on the In re
Kerkhoven rationale. However, since this rationale was not set forth in the examiner's final
rejection, it constitutes a new ground of rejection, notwithstanding the examiner's
contention that no new rejection was stated in the answer. On these facts, the Kerkhoven
issue has not been properly joined.
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