Appeal No. 94-2477
Application 07/893,554
acknowledges that stimulating appetite does not necessarily result in a weight gain.
Thus, as was the case in In re Muchmore, 433 F.2d 824, 825-26, 167 USPQ 681, 683
(CCPA 1970), the claims on appeal can be seen as including processes which yield the
argued unexpected result as well as processes which do not. As set forth in
Muchmore, claims which read on both obvious and unobvious subject matter, are
obvious under 35 U.S.C. § 103.
Furthermore, as set forth above, Regelson provides evidence that one of
ordinary skill in the art would have reasonably expected some patients to experience a
weight gain through use of the claimed treatment. Thus, to the extent appellant’s study
identified some HIV patients who gained weight as a result of the claimed treatment, it
is not clear from this record that that observation can be viewed as surprising or
unexpected.
Taking a step back and weighing the evidence of obviousness and the evidence
of nonobviousness, we conclude that the evidence of obviousness outweighs the
evidence of nonobviousness. Accordingly, we hold that the subject matter of claims 1,
2, 4 through 6, 8 through 10 and 12, in its entirety, would have been obvious to one of
ordinary skill in the art.
Other Issues
The clinical summary attached to the declaration of record under 37 CFR
11
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