Appeal No. 1999-1229
Application 08/543,975
examiner has engaged in impermissible hindsight in making her determination of
obviousness. In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1855, 1888 (Fed. Cir.
1991)(“It is impermissible, however, simply to engage in a hindsight reconstruction of the
claimed invention, using the applicant’s structure as a template and selecting elements from
references to fill the gaps”); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227
USPQ 543, 547 (Fed. Cir. 1985); W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)(“To
imbue one of ordinary skill in the art with knowledge of the invention in suit, when no prior art
reference or references of record convey or suggest that knowledge, is to fall victim to the
insidious effect of a hindsight syndrome wherein that which only the inventor taught is used
against its teacher”).
Third, it appears that the examiner has not fully appreciated the actual subject matter
encompassed by the claims. We point out that the most generic claim before us is directed
to a solid, orally administrable composition having a therapeutically effective amount of two
different lactases, having two different optimum pH ranges, and a solid pharmaceutically
acceptable carrier. See claim 1, above. The more specific claims are directed to solid,
orally-administrable compositions comprising specific lactases, specific dosages, specific
pH ranges, enteric coatings, etc. The examiner fails to address (i) any particular claim, or
(ii) the actual limitations in any of the claims. Rather, we find that the rejection consists only
of broad, sweeping generalizations as to why the claimed subject matter would have been
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