Appeal No. 2000-0643
Application 08/273,423
alopecia.”4 The issue, however, is whether the “favorable trend toward hair growth”
attributed to administering all-trans-retinoic acid and a corticosteroid would have been
unexpected.
Appellant’s burden to make adequate rebuttal under these circumstances is
described in In re Freeman, 474 F.2d 1318, 1324, 177 USPQ 139, 143 (CCPA 1973):
In order for a showing of “unexpected results” to be probative evidence of
non-obviousness, it falls upon the applicant to at least establish: (1) that there
actually is a difference between the results obtained through the claimed
invention and those of the prior art: and (2) that the difference actually
obtained would not have been expected by one skilled in the art at the time
of the invention (citations omitted).
To the extent that appellant relies on the results of the two double blind studies to
demonstrate a difference between the invention and the prior art, we are not persuaded.
Appellant acknowledges that at least one of the components used in the claimed method
is recognized as promoting hair growth (“[Bazzano] does teach that retinoic acid has utility
in promoting hair growth” Brief, page 8). Nevertheless, in each of the double blind studies
described in the declarations, the effect of administering all-trans-retinoic acid in
combination with a corticosteroid is compared with the effect of administering a placebo.
It cannot be established from these results whether there is any difference between
administering the combination and administering all-trans-retinoic acid alone, much less
whether any difference, if it exists, would have been unexpected. Having carefully reviewed
4 Declaration of Dr. Jules T. Mitchel, executed September 2, 1995 (page 3,
paragraph 22).
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