Appeal No. 2004-0973
Application No. 09/898,155
Shlyankevich
It is the examiner’s position that Shlyankevich (Answer, page 4):
discloses a composition that contains valerian, calcium carbonate, and
vitamins... Vitamins are considered by the examiner to be encompassed
by the limitation “supplements.” However, US '459 does not specifically
teach adding the ingredients together in the amounts claimed. The
amount of a specific ingredient in a composition is clearly a result effective
parameter that a person of ordinary skill in the art would routinely
optimize. Optimization of parameters is a routine practice that would be
obvious for a person of ordinary skill in the art to employ.
We do not find that the examiner has presented a prima facie case of
obviousness in view of Shlyankevich. We agree with appellants that “the amount of
sleep inducing compound disclosed is 10-80 mg (col. 5, line 20). No amount of
optimization of this 10-80 mg amount, either for the purpose of controlling estrogen
production or for any other purpose, would produce a formulation containing at least
300 mg of a sleep-inducing compound, as is presently claimed.” Brief, page 3.
Furthermore, patent examiners, in relying on what they assert to be general
knowledge to negate patentability on the ground of obviousness, must articulate that
knowledge and place it of record, since examiners are presumed to act from the
viewpoint of a person of ordinary skill in the art in finding relevant facts, assessing the
significance of prior art, and making the ultimate determination of the obviousness
issue. Failure to do so is not consistent with either effective administrative procedure or
effective judicial review, examiners cannot rely on conclusory statements when dealing
with particular combinations of prior art and specific claims, but must set forth the
rationale on which they rely. See In re Lee, 277 F.3d 1338, 1343-1344, 61 USPQ2d
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