Appeal No. 2001-1437
Application No. 08/764,145
they show an agonist to antagonist ratio that effects resensitization, “is not true.” Id.
Appellant argues (Brief, pages 3-4):
[b]y the very nature of their experimental sampling, with normalization of
these data, Geoffroy et al. were prevented from, literally rendered
incapable of, even observing the optimal agonist-antagonist ratio...
Geoffroy et al. do not show observed or inherent data points for the
precise titration of antagonist, that is, the critical point or optimal
formulation of the appellant's invention. Were such the case, their
response curve (Fig. 6) would show clearly a sustained (flattened)
response. Instead, and contrary to appellant's results, their Fig. 6
indicates a desensitization.
With respect to the obviousness rejection, appellant further argues “the position
that Geoffroy et al. were merely operating within a range near appellant's optimal results
is irrelevant in that without some foreknowledge of what to look for, one of ordinary skill
in the art would have to be content with their limited data and conclusions, neither of
which could impel a routineer to make the instant invention.” Brief, pages 4-5.
The examiner responds, arguing that “the instant claims are drawn to a
formulation and not to an explanation or a model that would result in the claimed
formulation. The existence of an agonist:antagonist composition that effects receptor
resensitization is deemed to anticipate the claimed compositions, in the absence of
factual evidence that the prior art composition is any different from the one claimed.”
Answer, page 6.
While we find merit in the examiner's observation that the claimed invention is
directed to a formulation or composition comprised of specific amounts of ingredients
not to a formula or explanation that would result in the claimed formulation, we agree
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