Appeal No. 2006-3234
Application No. 90/006,410
commensurate in scope with the claimed subject matter. In re Peterson, 315
F.3d 1325, 1330-31, 65 USPQ2d 1379, 1383 (Fed. Cir. 2003).
Unpredictability within an art may be considered in determining if
there is a reasonable expectation of success. However, a reasonable, not an
absolute, expectation of success is all that is required for obviousness.
“[O]bviousness cannot be avoided simply by a showing of some degree of
unpredictability in the art so long as there was a reasonable probability of
success.” Pfizer v. Apotex, ---F.3d ---, 2007 WL 851203 (Fed. Cir. 2007).
Expert testimony may be submitted by affidavit in response to a
rejection. 37 CFR §1.132. However, an expert’s testimony will be given
little or no weight unless the testimony is supported by facts. In re Etter, 756
F.2d 852, 860, 225 USPQ 1, 6 (Fed. Cir. 1985). Argument of counsel
cannot take the place of evidence lacking in the record. Estee Lauder Inc. v.
L'Oreal, S.A., 129 F.3d 588, 595, 44 USPQ2d 1609, 1615 (Fed. Cir. 1997).
IV. Analysis
35 USC § 102(b)
We understand the examiner’s rejection under 35 USC §102(b) over
the Red List to be based on the “printed publication” and not the “public
use” of Mediabet. Thus, we are unpersuaded by Appellant’s arguments that
Mediabet has not been shown to have been pubically used or sold in the
United States. (Brief at 5).
Claim 1 is directed to a pharmaceutical composition containing
metformin and a hydrocolloid forming retarding agent wherein the
composition has a residual moisture content of about 0.5-3% by weight.
According to the Red List, Mediabet is a film-coated tablet containing
metformin and polyvinylpyrrolidone, the latter of which is identified as an
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