Appeal No. 2005-0416 Page 4
Application No. 09/970,020
formulations providing separate delivery rates for enantiomers of a chiral drug.
Similarly, nothing in Gilbert suggests use of the particular excipients of Baichwal
in the disclosed two-part enantiomer formulations.” To the extent that appellants
are arguing each reference separately, we remind appellants “[t]he test for
obviousness is not express suggestion of the claimed invention in any or all of
the references but rather what the references taken collectively would suggest to
those of ordinary skill in the art presumed to be familiar with them.” In re
Rosselet, 347 F.2d 847, 851, 146 USPQ 183, 186 (CCPA 1965).
Appellants also assert (Brief, page 4), “the [e]xaminer has not pointed out
any specific reasons why one of ordinary skill in the art, without the benefit of
[a]ppellants’ disclosure, would select Baichwal’s excipients from the thousands of
known controlled release delivery systems for use in the two-part enantiomer
formulations of Gilbert.” According to appellants (Brief, page 5), “there simply
would have been no motivation for one of ordinary skill in the art to select the
sustained release excipients of Baichwal for use in the formulation described by
Gilbert.” In this regard, appellants assert (Brief, page 6),
Gilbert teaches controlled-release tablets and bi-layer tablets
prepared with a particular controlled release excipient, namely,
hydroxypropyl methyl cellulose (HPMC). … The [e]xaminer has not
provided any reason why one of ordinary skill in the art would
choose to prepare the formulations of Gilbert using any particular
undisclosed conventional controlled release technology, rather than
simply using HPMC, which Gilbert specifically teaches and
exemplifies.
Stated differently, appellants assert (Reply Brief, page 2), “there is no deficiency
in the teachings of Gilbert that would motivate one of ordinary skill in the art to
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