Appeal No. 2005-1150
Application No. 09/953,450
patient having diabetes and since Delhaye makes it clear that lipase is routinely
administered along with pancreatin to patients with chronic pancreatitis.” Id.
Although the examiner has made several excellent points with respect to the
applied prior art, we find the rejection fails primarily for two reasons.
First, we find the examiner’s reliance on Fallis to be misplaced. Patients having a
total pancreatoduodenectomy must receive treatment to replace both the lost endocrine
and exocrine functions of the pancreas. Patients with Type I diabetes, as set forth in
the claims, primarily lack only the endocrine function of the pancreas. Thus, we
disagree with the examiner that the condition of the patients taught by Fallis is
analogous to patients having Type I diabetes.
Second, in making a prima facie case of obviousness, it is the examiner’s
responsibility to show that some objective teaching or suggestion in the applied prior art,
or knowledge generally available [in the art] would have led one of ordinary skill in the
art to combine the references to arrive at the claimed invention. Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir.
1996). As discussed above, we do not find that the treatment group taught by Fallis is
analogous to patients having Type I diabetes. Rather, Fallis treats patients lacking a
pancreas and, therefore, the endocrine and exocrine functions associated therewith.
Delhaye discloses treating patients having both exocrine pancreatic insufficiency and
Type I diabetes. The common ailment between the patients in the applied prior art is
exocrine insufficiency, not diabetes. Thus, we do not find that the teachings therein
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007