Appeal No. 2006-3204 Page 14
Application No. 10/057,629
ibuprofen for aspirin or acetaminophen, in a formulation containing
pseudoephedrine, would be considered nonobvious if the new composition did
the same thing as the old ones but had fewer side-effects. This is not the
appropriate standard. Cf. Richardson-Vicks, Inc. v. Upjohn Co., 122 F.3d 1476,
1483-84, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997).
Finally, whether an invention satisfied a long-felt need, and what relevance
that has to obviousness, must be considered in light of the state of the art at the
time the invention was made: that an invention satisfied a long-felt need has little
relevance to obviousness if the means for satisfying that need became available
in the art only recently. See, e.g., Graham vs. John Deere Co., 383 U.S. 1, 36,
148 USPQ 459, 474 (1966) (“At the latest, those differences [between the
claimed and prior art products] were rendered apparent in 1953 by the
appearance of the Livingstone patent, and unsuccessful attempts to reach a
solution to the problems confronting [the inventor] made before that time became
wholly irrelevant.”); In re Sabatino, 387 F.2d 981, 986, 156 USPQ 212, 216
(CCPA 1968) (“[T]he evidentiary value of the many apparently unsuccessful
attempts to [solve the problem addressed by the invention] appears to be well-
tempered by the fact that those attempts occurred before Rigsby, the most
pertinent reference, became available to those in the art.”).
Therefore, any need that existed before ezetimibe was known to those
skilled in the art is irrelevant to the question at hand – whether it would have
been obvious to use ezetimibe to treat sitosterolemia.
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