Appeal No. 2005-2593 8
Application No. 90/005,867
supplement the teachings of Fahy. However, the appellant argues that Scow, Umbreit
and Pierpaoli fail to cure the deficiencies of Fahy. See Brief at 13.
Scow discusses the effect of testosterone and growth hormone on the growth of
muscle and other tissues in rats. The examiner explains that this combination of
hormones was taught as useful for ameliorating conditions associated with aging and
for increasing the mass of musculature important to the sexual activity of the male.4
See Answer at 6. Pierpaoli relates to administering melatonin to mice to preserve
aspects of their youthful state. Finally, the disclosure of Umbreit relates to measuring
and administering estrogen to delay the aging process in men.
Relying on In re Kerkhoven, 626 F.2d 846, 205 USPQ 1069 (CCPA 1980), the
examiner argues that (Answer at 6-7):
It is generally considered prima facie obvious to combine two
compounds each of which is taught by the prior art to be useful for the
same purpose, in order to form a composition which is to be used for the
very same purpose. The idea for combining them flows logically from their
having been used individually in the prior art. As shown by the recited
teachings, the instant claims define nothing more than the concomitant
use of two, or more conventional anti-aging agents. It would follow that
the recited claims define prima facie obvious subject matter.
Assuming for the sake of argument that it would have been obvious to administer
the combination of hormones disclosed in Fahy (human growth hormone and DHEA),
Scow (growth hormone and testosterone), Umbreit (estrogen) and Pierpaoli (melatonin)
4 The appellant denies that Scow discloses administering growth hormone and testosterone to treat the
effects of aging: “There is not one teaching [in Scow] of the combination as useful for ‘ameliorating conditions
associated with aging.’ ” Reply Brief at 6. However, as explained hereinafter, the teachings of Scow, either alone or
in combination with Fahy, Umbreit and Pierpaoli, fail to suggest the invention of claim 1. Therefore, it is not
necessary to address this issue.
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