Appeal No. 2003-1416 Page 4
Application No. 09/819,549
pressure lowering effect demonstrated by the data disclosed in MEDLINE 858 translates to an
amount of omapatrilat effective to treat isolated systolic hypertension. Note the quotation of
Prof. Dr. Rainer Kolloch, Biefeld: “Omapatrilat is well suited for treatment of [isolated systolic
hypertension], because of its efficient effect on both systolic and diastolic pressure.” (MEDLINE
767, ll. 19-20). Note that it is permissible to rely upon additional references in an anticipation
rejection to show that the claimed subject matter, every material element of which is disclosed in
the primary reference, was in possession of the public. In re Samour, 571 F.2d 559, 563, 197
USPQ 1, 4-5 (CCPA 1978); see also Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 20
USPQ2d 1746 (Fed. Cir. 1991)(“To serve as an anticipation when the reference is silent about
the asserted inherent characteristic, such gap in the reference may be filled with recourse to
extrinsic evidence.”).
Appellants’ sole argument is that EMBASE 767 merely suggests that it may be obvious to
try and use a vasopeptidase inhibitor such as omapatrilat to treat systolic hypertension and
“obvious to try” is not the appropriate standard under 35 U.S.C. § 103 (Brief, pp. 3-4).
According to Appellants, MEDLINE 858 does not overcome the deficiency of EMBASE 767 as
it merely reports a clinical study where omapatrilat lowered systolic and diastolic blood pressure
over 24 hours with a single dose (Brief, p. 4). This argument is no longer relevant, as we have
found that claim 14, the representative claim, is anticipated. Due to this shift in statutory basis,
we designate our affirmance as involving a new ground of rejection. See In re Meyer, 599 F.2d
1026, 1031, 202 USPQ 175, 178-79 (CCPA 1979).
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