Appeal No. 2004-2035
Application 09/978,763
proliferations as claimed in claim 75. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235
(CCPA 1955) (“[W]here general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine experimentation.”).
In view of the prima facie case of obviousness established by the examiner, we again
consider the record as a whole with respect to this ground of rejection in light of appellants’
rebuttal arguments in the brief and reply brief, including the evidence in the specification as
relied on in the brief and reply brief. See generally, In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984).
Appellants submit that Berg does not teach the claimed time frame of seven days and that
there is no reasonable expectation of success in attaining the claim limitation of a time frame for
drug release of seven days specified in claim 75 by following the teachings of Berg, pointing to
the differences between claim 75 and Berg Example 6 with respect to the type of stent, the type
of polymer, and the fact that the testing was done in buffered saline and not “within a body” as
claimed (brief, pages 4-7). We cannot agree. We recognize that the wire or coil stent of Berg
Example 6 differs from the claimed stent encompassed by appealed claim 75 as appellants point
out. However, the teachings of the reference are not limited to such a preferred embodiment, see
generally, Merck v. Biocraft Labs., 874 F.2d at 807, 10 USPQ2d at 1846 (quoting In re
Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“But in a section 103 inquiry,
‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be considered.’”), and we
fail to find in Berg Example 6 any teaching which detracts from the clear direction in the
reference to arrive at a desired sustained drug release by employing coatings of the polymer and
drug on the stent according to the teaching therein that we found above, including the stents,
polymers and drugs encompassed by claim 75. See, e.g., Lamberti, 545 F.2d at 750, 192 USPQ
at 280 (“The fact that neither of the references expressly discloses asymmetrical dialkyl moieties
is not controlling; the question under 35 USC 103 is not merely what the references expressly
teach, but what they would have suggested to one of ordinary skill in the art at the time the
claimed invention was made. [Citation omitted.]”).
- 7 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007