Appeal No. 1997-2744
Application No. 08/243,520
Therefore, in contrast to the examiner’s position, the Guler Declaration did
set forth how the trabecular and cortical bone differ structurally and metabolically.
Appellants’ argue (Brief, page 7) that “[e]ven the title of Mueller’s article,
‘Insulin-like Growth Factor-I Increases Trabecular Bone Mass in the
Ovariectomized Rat’ … reflects the extent of the conclusions that the authors
themselves were able to draw from this study.” Furthermore, appellants’ argue
(Brief, page 8) that there is no motivation to combine the references since Isgaard
does not teach the use of the claimed active agent to treat osteoporosis in a
mammal having reduced cortical bone mineral density and Mueller conclude that
cortical bone mass was only weakly affected by OVX and by treatment with either
IGF-1 or parathyroid hormone.
We agree. As set forth in In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d
1438, 1442 (Fed. Cir. 1991):
Where claimed subject matter has been rejected as obvious in
view of a combination of prior art references, a proper analysis under
[35 U.S.C.] § 103 requires, inter alia, consideration of two factors: (1)
whether the prior art would have suggested to those of ordinary skill in
the art that they should make the claimed composition or device, or
carry out the claimed process; and (2) whether the prior art would also
have revealed that in so making or carrying out, those of ordinary skill
would have a reasonable expectation of success…. Both the
suggestion and the reasonable expectation of success must be
founded in the prior art, not in the applicant’s disclosure.
In view of all the evidence presented in this record, we agree with appellants
(Brief, page 10) that “[a]t best, Isgaard and Mueller might render it ‘obvious to try’ to
use IGF-1 to treat or prevent osteoporosis in mammals having reduced cortical
bone mineral density … [h]owever, neither of these references provides any
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