Appeal No. 2006-0760
Application No. 10/312,417
must be “considered in its entirety for what it fairly suggests to one skilled in
the art.” In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 687 (Fed. Cir.
1986). We find that Lee’s teaching that an NSAID can be administered by
its drug delivery device “fairly suggests” that any NSAID can be used,
including celecoxib and rofecoxib, which are known NSAIDS.
In reaching an obviousness determination, it is necessary to identify
the differences between the claimed invention and the prior art, and then to
determine whether these differences are obvious in view of the scope and
content of the prior art and the level of skill in the pertinent art. Graham v.
John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 465 (1966). Lee’s
broad disclosure of agents which can be administered by its transdermal
delivery device, including seven broad classes of agents (painkillers,
steroidal anti-inflammatory drugs, NSAIDS, cardiovascular drugs, beta
blockers, vasodilators and ACE inhibitors) and many additional examples of
specific agents (e.g., nicotine, caffeine, and melatonin) establish that
choosing a particular agent to administer by Lee’s device is within the level
of ordinary skill in the art. Because the only difference between the subject
matter of claims 20-27 and the prior art is the choice of a known NSAID,
celecoxib and rofecoxib, for Lee’s delivery device, its selection would have
been obvious to the person of ordinary skill in the art in view of Lee’s
explicit disclosure that its device is useful for administering NSAIDS.4
(Col. 7, l. 55 to col. 8, l. 3.) In the absence of secondary considerations,
4 This same reasoning appears applicable to the subject matter of claims 13-
19. Upon return of this application to the technology center, the Examiner
should consider whether it is appropriate to reject claims 13-19 under this
same grounds of rejection.
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