Appeal No. 1997-1705
Application 08/211,352
would have been prima facie obvious to one of ordinary skill
in the art. The recitation in appellant’s claim 17 regarding
“the relief from arrested muscle growth having a duration
greater than the clinical activity of the presynaptic
neurotoxin” is merely an inherent characteristic of the above-
discussed administration of botulinum toxin A, and reciting an
inherent characteristic of the prior art does not render
appellant’s invention patentable. See In re Woodruff, 919
F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Appellant argues that he has discovered that botulinum
toxin A is effective in promoting normal growth and not just
the alleviation of spasticity (reply brief, page 2).
Appellant’s claim 17, however, is directed toward a method for
causing relief of muscle contractures. As discussed above,
Jankovic would have fairly suggested, to one of ordinary skill
in the art, administering botulinum toxin A to a child under
seven years of age to relieve muscle contractures.
Appellant argues that the claimed invention produces
unexpected results (reply brief, page 6). In support of this
argument appellant relies upon Case Study 1 and Example 2 of
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