Appeal No. 97-2833
Application 08/236,190
THE REJECTION
Claims 34, 35, 37-39, 41-46, 48-50, 52-57, 59-61, 63-66, 82, 83, 85 and 87-91
stand rejected under 35 U.S.C. § 103 as being unpatentable over the Surgeon
General’s report in view of appellant’s admissions at pages 4-8 of the specification,
Borzelleca, Michaels, Abood ‘916, and Hutchinson.
OPINION
We have carefully considered all of the arguments advanced by appellant and
the examiner and agree with appellant that the aforementioned rejection is not well
founded. Accordingly, this rejection will be reversed. We will introduce a new ground
of rejection of claims 34, 35, 37-39, 41-46, 48-50, 52-57, 59-61, and 63-66 under the
provisions of 37 CFR § 1.196(b).
The examiner argues that the Surgeon General’s report teaches that nicotine
suppresses appetite and reduces body weight and that appellant admits that the
nicotine metabolites recited in appellant’s claims were known in the art (answer, page
8). The examiner argues that because nicotine metabolites are produced after the
administration of nicotine and because optimization of the amount of nicotine
administered is within the skill of the artisan, appellant’s claimed invention would have
been prima facie obvious to one of ordinary skill in the art (answer, page 10).
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007