Appeal 2006-3012
Application 09/808,878
DISCUSSION
Appellant argues that the previous decision mischaracterizes his
position regarding what effect would have been expected from using the
lower dosages of MPA and CEE disclosed by Plunkett (Req. Rhg. 6-7).
Appellant argues that the First Lobo Declaration states that the lower doses
would have been expected to be less effective, not “unsuccessful in
controlling hot flushes,” as we stated in the previous decision.
The cited statement in the previous decision characterized the
following argument in the Appeal Brief:
Dr. Lobo states that the results of the study . . . showing that the
lower doses of CEE and MPA reduced the number and severity
of hot flushes, were contrary to what would have been expected
by those skilled in the art. ([Second] Lobo Declaration ¶ 6).
Accordingly, the teachings of the prior art and the knowledge
generally available in the art would not have suggested to those
skilled in the art that the [claimed dosages] would have been
reasonably successful in providing relief of vasomotor
symptoms of menopause.
Thus, the statement in the previous decision appears to accurately reflect the
argument to which it responded. In any event, Appellant’s argument based
on the First Lobo Declaration is addressed in a different part of the previous
decision (pages 9-11). Appellant’s position regarding the allegedly
unexpected results was correctly understood and addressed.
Appellant also argues that the affirmance should be designated a new
ground of rejection. Appellant points to our identification of Plunkett’s
claim 42 as the closest prior art (previous decision, at 12) as a rationale that
the Examiner had not raised (Req. Rhg. 4-5). Appellant also argues that the
Examiner did not rely on Utian, as we did, as evidence that the data in the
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Last modified: September 9, 2013