Appeal No. 2007-0542
Application No. 10/301,185
the reference or to combine reference teachings. See In re Vaeck, 947 F.2d
488, 20 USPQ2d 1438 (Fed. Cir. 1991); In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
In this case, the Examiner is required to provide a teaching,
suggestion, or motivation to have administered neurologic agents to a skin
region which is innervated by the trigeminal nerve, but outside the nasal
cavity. The Examiner asserts that the motivation arises from Frey’s clear
teaching that the claimed proteins are able “to reach brain through the
trigeminal nerves when applied” to skin regions “which are enriched with
these nerves.” Answer 6-7. But, we find no evidence in the record to
support the Examiner’s assertion.
As we understand it, the Examiner’s position is that the skilled worker
would infer from reading Frey that, when the neurologic agents (e.g., NGF
and FGF) are administered to the nasal cavity, they would be absorbed
through the trigeminal nerve. The Examiner contends that this inference
arises from the teaching in the specification that branches of the trigeminal
nerve are present in the nasal cavity. Answer 8. According to the Examiner,
these teachings supply the motivation to have administered neurologic
agents to skin regions innervated by the trigeminal nerve, including the nose
bridge as taught by Conk. Id. at 7-8.
The flaw in this argument is that the Examiner has not established that
the skilled worker would have recognized that drug absorption in Frey’s
method occurs through the trigeminal nerves. Frey expressly teaches that
the mechanism is through the olfactory nerve pathways. Col. 2, l. 50 to col.
3, l. 20. There is no mention of the trigeminal nerve. While the presence of
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