Appeal No. 2006-1083 Page 6
Application No. 09/799,251
Jackson’s carotenoid-containing supplements. Each of the claimed compositions
requires steroidal estrogen, estradiol, estrone, medroxyprogesterone, norethindrone,
norethisterone, progestin, norgestrel, and/or progesterone, together with a carotenoid -
regardless of whether it contains any other “active components.” Both of the prior art
references describe supplements which minimally contain plant-derived phytoestrogens
as essential components, and which may or may not additionally contain one or more
carotenoids. Jackson does not mention any of the hormones required by the claims.
Shlyankevich, on the other hand, teaches that 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), but also teaches that “there are side
effects and other risk factors associated with using estrogens . . . to prevent
postmenopausal osteoporosis” (id., column 1, lines 58-65).
Thus, although it is clear that steroidal estrogens and phytoestrogens were known
to have similar activities in many respects, we agree with appellants that “there is a
difference in kind between phytoestrogens and [the] steroidal hormones” required by the
claims (Brief, page 9). Inasmuch as Shlyankevich specifically avoids estrogens in his
supplements, we cannot agree with the examiner’s assertion that they would have been
regarded as “equivalent” for purposes of either of the prior art dietary supplements. Nor
do we see any other “motivation, suggestion or teaching of the desirability of making the
specific combination that was made by the applicant” (Kotzab, 217 F.3d at 1369-70, 55
USPQ2d at 1316) stemming from either the references or the rationale relied on by the
examiner.
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