Appeal No. 2000-0643
Application 08/273,423
optimization of amounts of ingredients is deemed within the skill of the artisan.”
Examiner’s Answer, pages 3 and 2, respectively.
The question that comes to mind is, optimization for what? Contrary to the
examiner’s assertion, the recitation “effective amounts” coupled with the recitation “for the
treatment of hair loss” confers a functional limitation on the claimed composition; in this
case, the preamble of the claim is not merely a statement of intended use. The examiner
does not allege that the levels of corticosteroid and RA in Lesnik’s examples, would, if
combined, be effective in treating hair loss. Nor has the examiner explained why one
skilled in the art would optimize, or adjust, the corticosteroid and RA amounts used in
Lesnik to levels effective to treat hair loss, when Lesnik does not mention hair loss at all.
35 U.S.C. § 103 requires that obviousness be determined based on the claimed
subject matter as a whole. Where, as here, the determination of obviousness is based on
less than the entire claimed subject matter, the examiner’s conclusion of obviousness is
unsound and cannot stand. On this record, we hold that the examiner has not established
a prima facie case of obviousness for claim 1, the broadest of the composition claims; that
being the case, we are constrained to reverse the examiner’s rejection of claims 1 through
9 under 35 U.S.C. § 103 as unpatentable over Lesnik.
Rejection II
5
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