Appeal No. 2006-1083 Page 5
Application No. 09/799,251
column 1, lines 58-65). According to Shlyankevich, “200 mg of isoflavones are
functionally equivalent to the daily dosage of conjugated steroidal estrogen used in
hormone replacement therapy” (id., column 3, lines 42-45).
The examiner acknowledges that Jackson does not teach the “selection of
hormones” required by the claims (Answer, page 4), but nevertheless concludes that
“[t]here is no significant difference observed between the instant invention and the prior
art” (id.). Alternatively, the examiner argues that “it would have been obvious for one of
ordinary skill in the pharmaceutical art to substitute” steroidal estrogens for the non-
steroidal phytoestrogens in Jackson’s or Shlyankevich’s supplements (id.), citing
Shlyankevich as evidence that phytoestrogens and estrogens are equivalent.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. Only if that burden is met, does the
burden of coming forward with evidence or argument shift to the applicant.” In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). “[I]dentification
in the prior art of each individual part claimed is insufficient to defeat patentability of the
whole claimed invention. Rather, to establish obviousness based on a combination of
the elements disclosed in the prior art, there must be some motivation, suggestion or
teaching of the desirability of making the specific combination that was made by the
applicant.” In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir.
2000).
We find that the evidence relied on by the examiner is insufficient to establish that
it would have been obvious for one skilled in the art to substitute the specific hormones
required by the claims for the phytoestrogens required in either Shlyankevich’s or
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