Appeal No. 2001-1819 Page 2
Application No. 08/886,072
wherein the same dosage of the progestin and estrogen combination is
administered in each of the 23-25 days.
The references relied upon by the examiner are:
Bennink 5,418,228 May 23, 1995
Barcomb 5,547,948 Aug. 20, 1996
Spona et al. (Spona) 5,583,129 Dec. 10, 1996
Oettel et al. (Oettel) 5,633,242 May. 27, 1997
Upton 0,253,607 Jan. 20, 1988
(European Patent Application)
GROUND OF REJECTION
Claims 1-17 and 23-29 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Bennink, Spona2 and Upton in view of Oettel and Barcomb.
We reverse.
DISCUSSION
As set forth in In re Dow Chemical Co. 837 F.2d 469, 473, 5 USPQ2d 1529,
1531 (Fed. Cir. 1988), “[t]he consistent criterion for determination of obviousness is
whether the prior art would have suggested to one of ordinary skill in the art that this
process should be carried out and would have a reasonable likelihood of success,
viewed in the light of the prior art.”
On this record, the examiner finds (Answer, page 3) that Bennink, Spona and
Upton teach contraceptive methods, compositions and kits “employing
2 We note that Spona, et al., United States Patent No. 5,583,129, relied upon by the examiner in
the Answer, is not the same reference relied upon in the Final Rejection, which was Spona, et al.,
WO 95/17194 (June 29, 1995). The examiner provides no explaination for changing references. We
note, however, that the change in references appears to result in a new ground of rejection. To the
extent the examiner has “switched horses” in the Answer and presents a different ground of
rejection than that developed during prosecution, we note, as set forth in 37 C.F.R. § 1.193(a)(2)
(1998), “[a]n examiner’s answer must not include a new ground of rejection….” We emphasize that
the Answer was mailed after the effective date of this rule, and therefore the examiner erred in
introducing a new ground of rejection in the Answer. Nevertheless, given our disposition, we find
this error harmless.
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