solution of r-hCG and mannitol would infringe applicants' claim
1. For a variety of reasons, many of which are apparent from our
findings, we are not prepared to say that applicants'
specification evidences unexpected results. However, assuming
arguendo it does, then what surfaces in this appeal that
applicants' claim is too broad in the sense of 35 U.S.C. § 103.
In re Muchmore, 433 F.2d 824, 826, 167 USPQ 681, 683 (CCPA 1970)
(claims which include obvious subject matter and non-obvious
subject matter are not patentable under § 103). A claim which
would preclude the public from using an injection solution
reconstituted from lyophilized r-hCG and mannitol runs afoul of
§ 103.
c.
Since our rationale in support of obvious is not that of the
examiner, it would be fair to say that applicants have not had a
reasonable opportunity to anticipate our rationale and address
it. We nevertheless feel it appropriate to address some of
applicants' arguments.
According to applicants (Appeal Brief, page 3), it has been
established that the stability of lyophilized hCG compositions
containing sucrose "is better" than similar compositions
stabilized with other materials, such as lactose or mannitol.
Accordingly, applicants make an argument in the form of a
question to the effect: "Why in the world would one skilled in
the art even 'try' to use mannitol in place of sucrose?" While
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