Appeal No. 2005-0406 Page 3
Application No. 10/187,616
Balch. According to the examiner (id.), Balch “disclosed that folic acid was an
essential nutrient in treating Paget’s disease, a disease characterized by
excessive bone loss.” We note the table of “essential” nutrients taught by Balch.
Balch, page 417. Most of the nutrients listed on this table are related to bone
growth or formation. Folic acid, however, is not one of those nutrients identified
by Balch to be related to bone growth or formation. To the contrary, as we
understand Balch’s table, folic acid is an essential nutrient for “energy
production.” See Balch, table, page 417.
Thus, we cannot agree with the examiner’s conclusion (Answer, page 6),
“according to Balch et al., the skilled artisan would have reasonably concluded
that the addition of folic acid into the diet aided in the indirect formation of bone.”
See also Answer, bridging sentence pages 6-7. Balch teaches nothing about a
relationship between folic acid and bone formation. To the contrary, Balch simply
implies that a person suffering Paget’s disease of bone would benefit by
supplementing their diet with folic acid for energy production. Balch also does
not teach a single composition as is required by the claimed invention, but
instead appears to suggest the use of individual nutrient supplements.
We recognize the examiner’s argument (Answer, page 7), “the skilled
artisan would have recognized the advantage of combining ingredients to aid in
the same underlying purpose; to increase bone density.”3 However, as we
2 The examiner finds (Answer, bridging sentence, pages 4-5), “[t]he [v]itamin K proposed by
Forusz et al. was phylloquinone (col.3, line 27).” According to the examiner (Answer, page 5),
Walsh teach “[v]itamin K-1 was known in the art as phylloquinone….”
3 See e.g., In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (“it is prima
facie obvous to combine two compositions each of which is taught by the prior art to be useful for
the same purpose, in order to form a third composition which is to be used for the very same
purpose.”); Accord In re Susi, 440 F.2d 442, 445, 169, USPQ 423, 426 (CCPA 1971) (“the
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