Appeal No. 2006-2745 Page 7
Application No. 09/966,119
diseases.” According to appellants (Brief, bridging sentence, pages 10-11), “[b]y
identifying an oral pharmaceutical composition comprising irradiated Cohn
Fraction II+III, the present invention for the first time provides a successful
solution to this long-standing problem.” We are not persuaded by appellants’
arguments concerning long-felt need.
Establishing long-felt need requires objective evidence that an art
recognized problem existed in the art for a long period of time without solution.
As set forth in In re Kahn, 441 F.3d 977, 990-91, 78 USPQ2d 1329, 1338-39
(Fed. Cir. 2006), “our precedent requires that the applicant submit actual
evidence of long-felt need, as opposed to argument. This is because “[a]bsent a
showing of long-felt need or the failure of others, the mere passage of time
without the claimed invention is not evidence of nonobviousness.” Iron Grip
Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325, 73 USPQ2d 1225, 1230
(Fed. Cir. 2004); accord In re Wright, 569 F.2d 1124, 1127, 193 USPQ 332, 335
(CCPA [sic] 1977).” We direct appellants’ attention to the Manual of Patent
Examining Procedure (MPEP) for a discussion of long-felt need. Specifically, as
set forth in MPEP 716.04 (I),
[t]he relevance of long-felt need and the failure of others to the
issue of obviousness depends on several factors. First, the need
must have been a persistent one that was recognized by those of
ordinary skill in the art. In re Gershon, 372 F.2d 535, 539, 152
USPQ 602, 605 (CCPA 1967) . . .; Orthopedic Equipment Co., Inc.
v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 217 USPQ 1281
(Fed. Cir. 1983). . . .
Second, the long-felt need must not have been satisfied by
another before the invention by applicant. Newell Companies v.
Kenney Mfg. Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed.
Cir. 1988). . . .
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