Appeal No. 2001-1819 Page 3
Application No. 08/886,072
progestogenic and estogenic compounds to be administered in particular amounts
on a specified dosage schedule, are known in the art.” The examiner recognizes
(id.) “[t]he claims differ in that they are drawn to methods and kits employing
particular progestogenic and estrogenic compounds in particular amounts on a
specified dosage schedule.”
To make up for this deficiency in Bennink, Spona and Upton, the examiner
affirmatively states (Answer, page 4) “[a]ny compound with progestogenic activity
would be reasonably expected to be useful in combined oral contraceptive
methods, absent evidence to the contrary.” In support of these conclusions the
examiner cites Oettel and Barcomb (id.) which according to the examiner “show that
progestogenic activity of compounds claimed herein is known in the art.
In reviewing the prior art relied on by the examiner, appellant finds (Brief,
pages 4-6) that none of the prior art teaches dienogest and the only reference that
teaches trimegestone is Barcomb. However, appellant finds (Brief, page 6) that
while Barcomb identifies trimegestone as a hormonal steroid “suitable for
incorporation into the sugar coated formulation [disclosed in Barcomb for the
controlled release of steroid formulations], … Barcomb does not teach or even
suggest the use of the steroid formulation containing trimegestone as a
contraceptive for 23-25 days per menstrual cycle.” According to appellant (id.)
“Barcomb does not even teach the use of trimegestone as a contraceptive at all.”
The examiner recognizes (Answer, page 4) appellant’s arguments “that each
of the references provides a piece of applicant’s invention, that there is no
motivation to combine the references and that hindsight analysis is utilized in the
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