Ex Parte PLASSE - Page 11




                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                                                
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