Appeal No. 2002-1404 Page 6
Application No. 08/891,918
suggestion or teaching in the combined teachings of the applied prior art, absent the
use of impermissible hindsight,3 for an artisan to have applied the blister pack teachings
of either Knudsen4 or D'Amico5 to the known regimen for treating sinusitis (e.g.,
Jacobus). In that regard, we note that, at most, the combined teachings of the applied
prior art may have suggested that one skilled in the art might have found it obvious to
try using a prepackaged blister pack which incorporates dosages for providing a
regimen for treating sinusitis. But whether a particular combination might be "obvious
to try" is not a legitimate test of patentability. See In re O'Farrell, 853 F.2d 894, 903, 7
USPQ2d 1673, 1680-81 (Fed. Cir. 1988); In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d
1596, 1599 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278
(Fed. Cir. 1987); In re Merck & Co., Inc ., 800 F.2d 1091, 1097, 231 USPQ 375, 379
3 Hindsight knowledge derived from the appellants' own disclosure to support an obviousness
rejection under 35 U.S.C. § 103 is, of course, impermissible. See, for example, W. L. Gore and Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984).
4 Knudsen discloses a pharmaceutical dispensing container which holds two dosage units which
are symptomatic treatments for respiratory tract disorders, the first of these dosage units being indicated
for day-time administration and being non-sedative and the second of these dosage units being indicated
for night-time administration and being sedative. Knudsen contains no teaching or suggestion to apply the
invention to any other treatment regimen. Thus, Knudsen's invention pertains only to treatment of
respiratory tract disorders.
5 D'Amico discloses a pharmaceutical dispensing container which holds multiple dosage units for
aiding in the compliance in the eradication/treatment for Helicobater pylori and subsequent/related gastric
maladies in relation to said bacterial infection using a repetitive dosage regimen for a treatment period of
sufficient duration to mitigate said bacterial infection formatted in such a way to gain optimal ease of
compliance resulting in improved outcome of treatment. D'Amico contains no teaching or suggestion to
apply the invention to any other treatment regimen. Thus, D'Amico's invention pertains only to treatment
of Helicobater pylori and subsequent/related gastric maladies.
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