is that claim 1 requires r-hCG with mannitol whereas the prior
art describes natural hCG with mannitol.
The PCT application, however, makes it more than clear that
r-hCG is a viable alternative to natural hCG. The PCT
application describes efforts to find a solution to stabilization
problems associated with hCG, in general, and r-hCG in particular
(page 3, lines 3-6). We hold that one skilled in the art would
have found it obvious to use r-hCG in place of natural hCG to
make the compositions described by the PCT application. The use
of purified r-hCG in place of natural hCG is nothing more than
the use of a known product for its known use to achieve an
expected result, i.e., a pharmaceutical composition with a known
use. Cf. In re Gorman, 933 F.2d 982, 987, 18 USPQ2d 1885, 1889
(Fed. Cir. 1991) (the claim elements appear in the prior art in
the same configurations, serving the same functions, to achieve
the results suggested in the prior art).
Once one accepts the fact that one skilled in the art would
have found it obvious to use r-hCG in place of natural hCG to
make a lyophilized product like the commercial natural hCG
ProfasiŽ product, then one also has to immediately accept the
proposition that the lyophilized product with r-hCG would be used
in practice by reconstituting it into an injectable solution (PCT
application, page 3, lines 21-22). It is the otherwise obvious
r-hCG/mannitol injectable solution which we feel renders obvious
the subject matter of claim 1. Stated in other terms, we find
that one using a reconstituted injectable otherwise obvious
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