Appeal No. 2001-1779
Application No. 09/398,898
necessarily have the required estrogenic activity. Anticipation is not established
by picking and choosing isolated elements from unrelated portions of a reference
and combining them to arrive at the claimed invention. See In re Arkley,
455 F.2d 586, 587-588, 172 USPQ 524, 526 (CCPA 1972). We reverse the
anticipation rejection of claim 2 over US ‘926.
Discussion – Obviousness
Claim 2 stands rejected by the examiner under 35 U.S.C. § 103(a) as
being unpatentable “over either WO ‘069 or US ‘926, each in view of the other.”
Examiner’s Answer, page 4. The examiner’s rationale for holding claim 2
obvious is set forth at page 4 of the Examiner’s Answer as follows:
WO ‘069 and US ‘926 teach all of the limitations of the claim
as stated above. Neither reference specifically teaches the amount
of extract needed to achieve estrogenic activity at least equivalent
to 1 nM of estradiol. It is within the skill of the art to determine the
amount of active agent needed to achieve a beneficial and/or
therapeutic effect. Therefore, absent evidence of unexpected
results, no patentable weight is given to the claimed amount of
chickpea extract. It would have been obvious to one of ordinary
skill in the art at the time of the invention to combine the teachings
of WO ‘069 and US ‘926 with the reasonable expectation of
producing a topical composition that exhibits estrogenic activity.
We do not find the examiner’s reasoning persuasive of obviousness. The
criteria for obviousness determinations are set forth in Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966) as follows:
[T]he scope and content of the prior art are to be determined; differences
between the prior art and the claims at issue are to be ascertained; and
the level of ordinary skill in the pertinent art resolved. Against this
background, the obviousness or nonobviousness of the subject matter is
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