Appeal No. 2005-0545
Application No. 09/989,019
as a whole, implicitly would have suggested Pugliese’s claimed
multicomponent composition and method for its use to persons having
ordinary skill in the art with reasonable expectation of success.
See In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681
(Fed. Cir. 1988)(for obviousness under § 103, all that is required
is a reasonable expectation of success). Moreover, the examiner
correctly states that it is not necessary for our holding of
obviousness that persons having ordinary skill in the art would have
been led to make and use the compositions and methods Pugliese
claims for the reasons Pugliese discloses. See In re Dillon,
919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(en banc),
cert. denied, 500 U.S. 904 (1991):
Each situation must be considered on its own facts, but
it is not necessary in order to establish a prima facie
case of obviousness that . . . the claimed compound or
composition will have the same or a similar utility.
On consideration of the prior art as a whole, we conclude that
persons having ordinary skill in the art reasonably would have been
led to make and use compositions comprising at least one of
components selected from (a) quercetin and fisetin, (b) genistein
and daidzein, (c) carnitine, (d) theophylline, caffeine and
theobromine, and (e) plant extract of Coleus Forskohli, with
solubilizing and/or emulsifying agents suitable for oral or topical
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