Appeal No. 2004-0394 Page 11
Application No. 09/915,467
VI. The art does not teach away from the claimed invention:
According to appellant (Request, page 3), the art teaches away from the claimed
combination. In support of this assertion, appellant relies (id.) on Shangold9 (column
11, lines 49-54), which according to appellant “teaches to not use contraceptives where
there is a ‘concomitant use of isotretinoin (Accutane), tretinoin (Renova or Retin-A) or
has taken them within the 30 day period immediately prior to the screening visit.’” In
our opinion, appellant has mischaracterized the cited section of the reference.
Shangold is drawn to a method of contraception and a triphasic oral contraceptive. See
claims. The section of Shangold cited by appellant refers to a portion of the criteria
used by Shangold to exclude subjects from a “randomized, multi-center study to
evaluate three blinded regimens of norgestimate and ethinyl estradiol (NGM/EE) oral
contraceptive and an open-label control regimen.” See Shangold, column 10, line 20
through column 11, line 54. Thus, while Shangold excluded subjects using isotretinoin
(Accutane) from the study, we find no disclosure in Shangold that “teaches to not use
contraceptives where there is a ‘concomitant use of isotretinoin (Accutane)…” as
asserted by appellant.
In addition appellant relies on Gaull10 to teach “combining isotretinoin not with a
contraceptive, but with taurine, a compound ‘which reduces the side effects of
isotretinoin.’” Request, page 3. Apparently, appellant believes that since the art taught
an alternative to the combination of isotretinoin with a contraceptive the art teaches
away from appellant’s claimed invention. We note, however, that the mere fact that
9 Shangold et al. (Shangold) 6,214,815 Apr. 10, 2001
10 Gaull 4,545,911 Oct. 8, 1985
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