Appeal No. 1997-2751
Application No. 08/159,096
that the cited prior art provides no “reason, suggestion, or motivation” to modify
the prior art in such a way. Rather, the cited references suggest that
bisphosphonates would have been expected to interfere with, not aid, the
process of bone fracture healing. For example, Gall teaches use of
bisphosphonates to treat a variety of diseases (e.g., osteoporosis and Paget’s
disease) but does not suggest that such compounds would be useful to treat a
bone fracture. Similarly, Fitton teaches use of bisphosphonates to treat Paget’s
disease and thereby reduce the risk of bone fractures, but says nothing to
suggest that the compounds would be useful to treat fractures after they occur.
In fact, one of the references relied on by the examiner actually teaches away
from the claimed method. Kanis states that inhibitors of bone resorption such as
bisphosphonates may “increase the risk of microfracture or delay their repair and
lead to skeletal failure . . ., by reducing the rate of remodeling of damaged bone,
inhibiting callus formation, or both.” Page 27.
Appellants in their Brief pointed out that the bisphosphonates pamidronate
and etidronate have been reported in the scientific literature to inhibit fracture
healing. Appellants cited, among others, the references in the record by Reid et
al. and Finerman et al. as disclosing adverse effects of bisphosphonates on
fracture healing. In response, the examiner stated that Appellants’ reliance on
Reid and Finerman was “not part of the original rejection and any response to it
would be considered new grounds of argument.” Examiner’s Answer, page 4.
The examiner erred in not addressing the teachings of Reid and Finerman
cited by Appellants. “If a prima facie case [of obviousness] is made in the first
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