Appeal 2007-1820
Application 10/659,408
(a)] for comparison to ascertain whether treatment was
effective.
(Answer 7.) The Examiner also contends that it would have been obvious to
have used “trends” as recited in claim 18, steps (c) and (d), to modify drug
treatment because Kharitonov’s description of “progressive” changes in
eNO implies an observed trend that would be monitored to ascertain the
efficacy of drug therapy and determine when therapy should be adjusted
(Answer 7-8).
It is the Examiner’s burden to establish prima facie obviousness. In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
Obviousness requires a teaching that all elements of the claimed invention
are found in the prior art and “a reason that would have prompted a person
of ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1741, 82 USPQ2d 1385, 1396 (2007). In our opinion, the Examiner has
sustained his burden of establishing prima facie obviousness by providing a
teaching of all elements of the claimed subject matter and a logical reason
that would prompted one skilled in the art to combine them.
Appellants contend that Moilanen does not teach a baseline as it is
used in their invention (Appeal Br. 6; Reply Br. 2). They argue that baseline
utilized in Moilanen “is averaged over 57 disease and 57 healthy patients
rather than on a specific patient on which the information is to be in used in
the practice of Appellants’ invention” (Reply Br. 2). Appellants also
contend that “neither [Moilanen] nor [Kharitonov] disclose or suggest the
frequency of the measurement needed to establish the baseline, or the
frequency or number of measurements over any period of time to determine
the amount or direction of the change in measured NO levels, much less any
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