Appeal No. 2001-1819 Page 4
Application No. 08/886,072
rejection.” Nevertheless, the examiner does not find appellant’s arguments
persuasive “since the references clearly teach the use of a progestogen/ estrogen
combination….”
The examiner, however, appears to miss the point of appellant’s arguments.
Appellant’s claimed method requires, inter alia, administering to a female a
combination of the progestin, trimegestone or dienogest, together with an estrogen
for 23-25 days, wherein the same dosage of the progestin and estrogen
combination is administered in each of the 23-25 days. The examiner recognizes
that the claims differ from Bennink, Spona and Upton in that thy require “particular
progestogenic and estrogenic compounds in particular amounts on a specified
dosage schedule.” See Answer, page 3. Of the two references relied on to make
up for the deficiency in Bennink, Spona and Upton, only Barcomb teaches the
claimed progestin – trimegestone. However, as explained by appellant (Brief, page
6) “Barcomb does not even teach the use of trimegestone as a contraceptive at all.”
Prima facie obviousness based on a combination of references requires that
the prior art provide “a reason, suggestion, or motivation to lead an inventor to
combine those references.” Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75
F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). On this record, the
only suggestion to combine the references is found in appellant’s specification and
the examiner’s unsupported conclusion that “[a]ny compound with progestogenic
activity would be reasonably expected to be useful in combined oral contraceptive
methods….”
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