Appeal No. 1997-2751
Application No. 08/159,096
inhibition of bone resorption that is the basis for treating resorptive bone
disorders would not have been expected to aid fracture healing. Finally,
Appellants assert that the Examiner misread the prior art to suggest that fracture
healing and treatment of bone loss require the same type of treatment, and
ignored teachings in the prior art that would have led a skilled artisan to expect
that bisphosphonate compounds would likely have a deleterious effect on
fracture healing.
“It is well-established that before a conclusion of obviousness may be
made based on a combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those references.”
Pro-Mold & Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
Although couched in terms of combining teachings found in the
prior art, the same inquiry must be carried out in the context of a
purported obvious “modification” of the prior art. The mere fact that
the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification.
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
Here, the examiner has concluded that it would have been obvious to modify the
prior art methods by administering bisphosphonate compounds, not to prevent
future bone fractures, but to treat fractures after they occur.
Having carefully considered the evidence and reasoning presented by
Appellants and the examiner, we find ourselves in agreement with Appellants
and one not, the reference in English should be preferred.
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