Appeal No. 2005-0902 Page 9
Application No. 09/529,053
This argument is not persuasive. Whether the prior art references suggest
combining their teachings for the same reason Appellants made their combination is
immaterial. Rather, “[w]hen determining the patentability of a claimed invention which
combines two known elements, ‘the question is whether there is something in the prior
art as a whole to suggest the desirability, and thus the obviousness, of making the
combination.’” In re Beattie, 974 F.2d 1309, 1311-12, 24 USPQ2d 1040, 1042 (Fed.
Cir. 1992) (emphasis added). Here, both prior art references concern treatment of HIV:
Weithmann teaches that leflunomide is useful in treating HIV infections, while Hammer
teaches other anti-HIV agents and suggests that a combination of anti-HIV agents is
more effective than a single agent. These teachings reasonably suggest the method
defined by claim 22.
Summary
We affirm the rejection of claims 16-21, 24, and 25, based on Coghlan and
McChesney. We also affirm the rejection of claims 22 and 23 based on Weithmann and
Hammer. In both cases, however, since our reasoning differs somewhat from that of
the examiner, we designate our affirmance a new ground of rejection under 37 CFR
§ 41.50(b).
Time Period for Response
This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz.
Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial review.”
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