Appeal 2007-0526
Application 10/141,032
powder inhaler but not the claimed drug delivery method and composition”
(id. at 9). Appellants urge that when Vaghefi is considered as a whole, the
disclosure of tobramycin among hundreds of other inhaled drugs of varying
properties “clearly does not suggest the desirability, and thus the
obviousness, of the claimed method of delivery of particular types of
particles comprising tobramycin which achieve reduced interpatient
respiratory dosage variability” (id.).
We do not find Appellants’ argument persuasive. We agree that
“obviousness requires a suggestion of all limitations in a claim.” CFMT,
Inc. v. Yieldup Int’l. Corp., 349 F.3d 1333, 1342, 68 USPQ2d 1940, 1947
(Fed. Cir. 2003). However, it is well settled that “[n]on-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references. . . . [The
reference] must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole.” In re Merck & Co., 800 F.2d
1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
Thus, Appellants analyze each reference in isolation, rather than in the
combination presented in the appealed rejection, as Merck requires. The fact
that Edwards and Vaghefi do not, in isolation, teach or suggest all the
limitations in claims 20 and 51 does not demonstrate that the claims are
nonobvious.
Rather, Edwards must be viewed alongside Vaghefi. When the
advantages of Edwards’ inhaled drug delivery formulation are viewed
alongside Vaghefi’s disclosure of the desirability of inhaling tobramycin, we
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