Appeal No. 95-4823
Application 07/856,012
One skilled in the art would have been motivated to combine the teaching
of the above references, since one relates to the claimed type compounds in
lowering intraocular pressure and the other relates to the use of diazepam a
well known GABA agonist for reducing intraocular pressure. The above
references make clear that diazepam having GABA agonist activity has
been previously used for lowering intraocular pressure. Such teaching reads
on the generic claim which is directed to the use of a GABA agonist for the
treatment of glaucoma. The specific amino butyric agonists are also
rejected over the combination of the relied upon reference, since it would
have been obvious to a person skilled in the art to substitute one GABA
agonist for another. Thus, for the above reasons and in view of relied upon
references, the claimed use does not patentably distinguish over the state of
the art, and claims 11, 12, 14, 17, 19, 21 and 22 are properly rejected under
35 USC 103.
First, while the statement of the rejection proposes to combine "the teaching [sic] of
[Kastner and Pino Capote]” the examiner has not explained which portions of the
references are to be combined and in what manner. As set forth in the Manual of Patent
Examining Procedure (MPEP) § 706.02(j) (6th ed., no. 3, July 1997), in making a rejection
under 35 U.S.C. § 103,
the examiner should set forth . . . (1) the relevant teachings of the prior art
relied upon, preferably with reference to the relevant column or page
number(s) and line number(s) where appropriate, (2) the difference or differ-
ences in the claim over the applied reference(s), (3) the proposed
modification of the applied reference(s) necessary to arrive at the claimed
subject matter, and (4) an explanation why such proposed modification
would have been obvious to one of ordinary skill in the art at the time the
invention was made.
Failure of the examiner to identify the difference or differences in the claims over the
applied references and clearly communicating the proposed modification of the applied
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007