Appeal No. 2000-1909 Page 7
Application No. 08/790,528
The rejection states that it would have been obvious “to have added an
integral chewing gum through the methods of Beringer or Cherukuri, as such
multi zone delivery compositions were well known in the art and they allowed the
incorporation of different pharmaceuticals.” Examiner’s Answer, pages 7-8.
While it may have been known that pharmaceuticals may be incorporated into a
multi-zone delivery device, the rejection does not address why the ordinary
artisan would have been motivated to place all of the active ingredients in a
chewable tablet, and then add a chewing-gum integral with the chewable tablet.
Specifically, if all of the active ingredients were placed in a chewable tablet, the
rejection does not address why one of ordinary skill in the art at the time the
invention was made would have been motivated to add a chewing-gum integral
with the chewable tablet, which already contains all of the active ingredients.
See In re Lee, 277 F.3d 1338, 1342, 61 USPQ2d 1430, 1432 (Fed. Cir. 2002) (in
reviewing an obviousness rejection, the court noted that “conclusory statements”
as to teaching, suggestion or motivation to arrive at the claimed invention “do not
adequately address the issue.”).
Moreover, the examiner has ignored certain teachings of the prior art
references that would lead one away from the claimed invention. Obviousness is
not based on isolated teachings in the art, but is determined in view of the sum
of all of the relevant teachings in the art. See In re Kuderna, 426 F.2d 385, 389,
165 USPQ 575, 578 (CCPA 1970); see also In re Shuman, 361 F.2d 1008, 1012,
150 USPQ 54, 57 (CCPA 1966). For example, Caldwell teaches that the use of
an effervescent tablet to deliver a H-2 antagonist reduces the bioavailability of
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