Ex Parte Sander-Struckmeier et al - Page 11
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Board of Patent Appeals and Interferences > 2005 > Ex Parte Sander-Struckmeier et al - Page 11
Appeal No. 2005-1150
Application No. 09/953,450
have been obvious to one of ordinary skill in the art to include a microbial lipase in the
pharmaceutical preparation used to treat the diabetes patients. Accordingly, we hold
that the method set forth in claim 5 is unpatentable under 35 U.S.C. § 103 in view of
Claim 2 stands on a different footing. The method described therein requires the
use of an enzyme mixture of microbially-synthesized lipases, proteases and amylases.
Although Delhaye teaches the advantages of using a microbially-synthesized lipase in
vivo, the publication is silent with respect to the other microbially-synthesized enzymes
recited in the claim. Upon return of the application to the corps, the examiner may wish
to perform an additional search of the prior art to determine whether microbially-
synthesized pancreatic amylases and proteases were known in the art and, if so,
whether these enzymes were also known to be more resistant to acid inactivation in
vivo. Assuming, arguendo, that the examiner finds such teachings, he may wish to
consider whether said teachings, in combination with Delhaye, would have rendered the
method recited in claim 5 obvious to one having ordinary skill in the art.
This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz.
Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial review."
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Last modified: November 3, 2007