Appeal 2007-1821
Application 11/040,964
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. __, 82 USPQ2d 1385, 1397 (2007).
It is our opinion that oral administration was a known option that would
have been obvious to try.
Appellants’ invention meets a long-felt need
Appellants also argue that “the presently claimed invention provides a
solution to a long-felt need, i.e., an orally active and parenterally long-acting
androgen” (Br. 5).
In making an obviousness determination, the Supreme Court instructs
us “to look at any secondary considerations that would prove instructive.”
KSR, 82 USPQ2d at 1395. Among these considerations is “long felt but
unsolved needs.” Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
“[P]recedent requires that the applicant submit actual evidence of long-felt
need.” In re Kahn, 441 F.3d 977, 990, 78 USPQ2d 1329, 1338-39 (Fed. Cir.
2006). In this case, Appellants assert that “the presently claimed invention
provides a solution to a long-felt need, i.e., an orally active and parenterally
long-acting androgen” (Br. 5). As evidence of this, a declaration under 37
C.F.R. § 1.132 is provided by co-inventor Dr. Richard Blye (Blye 1
Declaration) which Appellants assert shows that “others have failed to
produce an orally active and parenterally long-acting androgen” (Br. 5).
The relevant secondary consideration is “long-felt but unsolved need.”
The first question is whether there is evidence of a “long-felt need.”
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