Appeal No. 2001-0982 Page 6
Application No. 08/310,950
[hormone replacement therapy].” We note, however, the examiner’s failure to
identify the amount of prostacyclin or other hormone taught by Adams or Braun.
In addition, we note that according to the examiner the results taught by Adams
and Braun demonstrate that the individual use of the hormones was “beneficial,”
contrary to the requirements of the claimed invention wherein “the amounts of
prostacyclin, prostacyclin analog, estrogen or progesterone are individually
ineffective or marginally effective.”
In addition, we note appellants’ argument (Reply Brief, page 4) that
notwithstanding the examiner’s conclusion “there was no expectation that the
use of the combination of a prostacyclin with a progestin and/or an estrogen for
treatment of hypertension, hormone replacement therapy and/or atherosclerosis
would be that the combination of compounds would have a synergistic effect.”
While we recognize that synergism, in and of itself, is not conclusive of
unobviousness3, on this record the examiner failed to provide evidence
suggesting that something more than an additive effect would be obtained
through the combination of Adams with Braun. In this regard, we note the
examiner’s reliance (Answer, page 5), “on the rejection made in the final office
action as set forth above.” As set forth in the Final Office Action, the examiner
finds (Paper No. 17, page 2), “[t]he motivation is obvious to combine the agents
to achieve an additive effect.” Stated differently, the examiner has provided no
evidence, on this record, to suggest that a synergistic effect would have been
expected.
3 See In re Huellmantel, 324 F.2d 998, 1003, 139 USPQ 496, 500 (1963) (synergism might be
expected.).
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