Appeal No. 1995-3021
Application 07/949,347
The results [of the clinical study] are surprising and useful. In
addition to the benefit of lowering the consumption of the Centrally
Acting Agent, the efficacy-to-adverse-reactions ratio is not just
maintained, but substantially improved by the innovative
combination. In fact, this ratio is sixty six percent (66%) higher for
Treatment B than for Treatment A.
2. Merck Index
The Merck Index only describes what most reasonable people would have admitted to
have been known at the time of the present invention, i.e., acetaminophen, acetyl salicylic acid
and codeine were each known to be useful as analgesics. The Merck Index does not describe
or provide any dosing information for any of these compounds either individually or in
combination. While one might very well be “motivated” to optimize amounts of these three
agents, the question is why would one of ordinary skill in the art found it obvious to use the
precise amounts required by the claims on appeal? The evidence relied upon by the examiner,
The Merck Index, provides no information on dosing. Viewing the examiner's rejection in the
factual vacuum in which it exists, The Merck Index simply does not allow one to get from here to
there. Viewing The Merck Index by itself, one is only left to surmise and conjecture as to
possible effective combinations of the three known analgesics.
The admitted prior art in the background portion of the specification is more relevant in
determining the patentability of the claims on appeal than The Merck Index. At least the
background information describes the amounts of acetaminophen, acetyl salicylic acid and
codeine used in previous unit dosage forms of these known analgesic agents. However, as
pointed out above, the unit doses required by the claims on appeal differ from those admitted to
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