Appeal No. 2004-1478 Page 3
Application No. 10/099,356
The examiner rejected the claims as obvious in view of Plunkett, because
Plunkett teaches that estrogens such as conjugated equine estrogens had been used
(without added progestin) in estrogen replacement therapy, and Plunkett teaches that
effective dosages of various estrogens range from 0.005 to 2.5 mg/day. See Paper No.
7, mailed February 11, 2003, pages 3-5.
Appellants argue that the examiner “has relied upon selected language from the
reference . . ., without considering the teaching of the Plunkett et al. reference as a
whole. When properly read, the Plunkett et al. reference not only fails to teach or
suggest the present invention, but in fact teaches away from the present invention.”
Appeal Brief, page 3. Appellants review the teachings of Plunkett and conclude that
“[t]here is no teaching or suggestion in Plunkett et al. of the use of conjugated estrogens
in the range recited in the claims on appeal (0.1 –0.25 mg), much less that such a low
range can be successfully utilized in the absence of a co-administered progestogen.”
Id., page 5 (emphasis added). (According to Appellants, Plunkett’s “progestogen” and
claim 12’s “progestin” are synonymous. See the Appeal Brief, footnote 1.)
We agree with Appellants. When determining obviousness, “the prior art as a
whole must be considered. The teachings are to be viewed as they would have been
viewed by one of ordinary skill.” In re Hedges, 783 F.2d 1038, 1041, 228 USPQ 685,
687 (Fed. Cir. 1986). “It is impermissible within the framework of section 103 to pick
and choose from any one reference only so much of it as will support a given position,
to the exclusion of other parts necessary to the full appreciation of what such reference
fairly suggests to one of ordinary skill in the art.” Id.
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