Appeal No. 95-2851
Application 08/012,379
in appellant’s claims, and Benowitz concludes that the infused amount has little if any
pharmacologic effect (page 610). This reference, therefore, indicates that the amount
of cotinine which is in the bloodstream of a moderately heavy cigarette smoker would
not have the pharmacologic effect of reducing or eliminating symptoms of tobacco
withdrawal syndrome.
Furthermore, Bannon teaches that as nicotine levels fall after smoking,
additional nicotine is required to suppress the urge to smoke (col. 1, lines 53-68).
The examiner does not point out, and we do not find in the references relied
upon by the examiner, any indication that the total nicotine metabolites produced by
smoking would build up in the blood stream in an amount which is within the range
recited in appellant’s claims and which would be effective for reducing or eliminating
symptoms of tobacco withdrawal syndrome as required by these claims.
For the above reasons, we conclude that the examiner has not carried her
burden of establishing a prima facie case of obviousness of appellant’s claimed
invention.
Under the provisions of 37 CFR § 1.196(b), we enter the following new grounds
of rejection.
Claims 1, 2, 4-6, 8-13, 15-17, 19-24, 26-28, 30-33, 67, 68, 70-74 and 91-99 are
rejected under the judicially created doctrine of obviousness-type double patenting over
claims 1-26 of Keenan ‘007 in view of appellant’s admitted prior art, and claims 67, 68
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