Appeal No. 95-2851
Application 08/012,379
of ordinary skill in the art that an article which contains the appropriate amount of
cotinine and instructions for administering it would be needed to carry out the method.
Appellant’s claims 67, 68 and 70-74 differ from the Keenan ‘774 claims in that
appellant’s claims recite that the article contains a means for instructing that the
contents can be used in an amount of 1 to 100 mg/kg of body weight to alleviate the
symptoms of tobacco withdrawal, nicotine withdrawal, and craving associated with the
cessation of nicotine use. Given that the Keenan ‘774 article is for use by a human to
suppress appetite, prevent weight gain or induce weight loss as recited in the Keenan
‘774 independent claims, it would have been prima facie obvious to one of ordinary skill
in the art to include instructions as to how to administer the contents of the article for
that purpose. The instructions would differ from those recited in appellant’s claims only
in the wording of the instructions. Because the printed matter in the instructions has no
functional relation with the substrate on which it appears, it does not distinguish
appellant’s claimed invention over that of Keenan ‘774. See In re Gulack, 703 F.2d
1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983). Hence, the article recited in
appellant’s claims 67, 68 and 70-74 would have been prima facie obvious to one of
ordinary skill in the art over claims 1-17 of Keenan ‘774.
DECISION
The rejection of claims 1, 2, 4-6, 8-13, 15-17, 19-24, 26-28, 30-33, 67, 68 and
70-99 under 35 U.S.C. § 103 over Abood ‘916, Abood ‘162, Bannon, Hutchinson,
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