Appeal No. 2001-1819 Page 5
Application No. 08/886,072
The examiner, however, fails to provide any evidence to suggest that
trimegestone or dienogest are equivalent to the progestins disclosed in the primary
references, wherein one would reasonably expect them to be useful in appellant’s
claimed method. To establish a prima facie case of obviousness, there must be
both (1) a suggestion or motivation to modify the references or combine reference
teachings and (2) a reasonable expectation of success. See Dow; In re Vaeck, 947
F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
On this record we find neither a suggestion to combine the prior art, nor a
reasonable expectation of success. Accordingly, we reverse the rejection of claims
1-17 and 23-29 under 35 U.S.C. § 103 as being unpatentable over
Bennink, Spona and Upton in view of Oettel and Barcomb.
REVERSED
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
William F. Smith )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Donald E. Adams )
Administrative Patent Judge )
DA/dym
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