Appeal No. 2004-0394 Page 4
Application No. 09/915,467
Appellant’s Request implies that his invention satisfied a long-felt need which
was not previously satisfied. However, here, as in In re Cavanagh, 436 F.2d 491, 496,
168 USPQ 466, 471 (CCPA 1971), appellant failed to bring forward evidence of his
satisfaction of the need. Accordingly, appellant failed to rebut the prima facie case of
obviousness as set forth in the Decision.
II. Appellant’s reference to “2001 data” is factually incorrect:
We note that appellant relies on Roche Pharmaceuticals, Inc.,(Roche) at Table 1
(see Request, page 4), and the Food and Drug Administration’s (FDA) “interpretation of
this data” (see Request, pages 3-4). While appellant refers to the data presented in
Roche’s Table 1 as “2001 data,” we find that according to the note following Table 1
there was a “[c]umulative data cut-off date of March 31, 2000.” This date is prior to the
April 4, 2000 issue date of Elsayed, and the August 6, 2002 issue date of Abrams,
which we note is after appellant’s filing date. Stated differently, the data presented in
Roche’s Table 1 is prior to the date that the Elsayed and Abrams patents were public
knowledge. 1
Furthermore, the Roche report does not include data for 1999 and 2000 in most
of their reports because the data is unstable for 1999 and 2000. See Roche, section
1.2, fourth paragraph, “[b]ecause the data are unstable for 1999 and 2000, these data
are not included in most of the following review tables.” Accordingly, most of the Roche
1 [A]s a matter of common sense, it is clear that the contents of a patent application which
may be available as ‘prior art’ under § 102(e) to show that another was the first inventor
may not have been known to anyone other than the inventor, his attorney, and the Patent
Office examiner, and perhaps the assignee, if there was one, until it issued as a patent.
As of its filing date it does not show what is known generally to ‘any person skilled in the
art,’ to quote from § 112.
In re Glass, 492 F.2d 1228, 1232, 181 USPQ 31, 34 (CCPA 1974). Accordingly, neither Elsayed nor
Abrams were available to demonstrate what was generally known to a person of ordinary skill in the art as
of the cumulative data cut-off date of March 31, 2000 reported in Roche’s report. See also Hazeltine
Research v. Brenner, 382 U.S. 252, 254-55, 147 USPQ 429, 431 (1965) (under Section 102(e) a patent is
a reference as of its filing date, although its existence is not known until it issues).
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