Appeal No. 2006-1304 Page 11
Application No. 10/214,058
This argument is not persuasive, because it fails to address the teachings of
Jukema in combination with those of Roth and Lazar. See In re Rosselet, 347 F.2d
847, 851, 146 USPQ 183, 186 (CCPA 1965) (“[T]he test of obviousness is not express
suggestion of the claimed invention in any or all of the references but rather what the
references taken collectively would suggest to those of ordinary skill in the art presumed
to be familiar with them.”) (emphasis omitted). In view of the small number of specific
CCBs disclosed by Jukema and the apparent equivalence of statins, the prior art as a
whole supports the examiner’s conclusion that the claimed composition would have
been prima facie obvious to a person of ordinary skill in the art.
Finally, Appellant argues that the Orekhov paper8 provides evidence that
contradicts the reasoning underlying the examiner’s rejection. See the Appeal Brief,
pages 15-22.
We decline to consider the evidence provided by the Orekhov paper because
that evidence was not available to those skilled in the art at the time this application was
filed. The determination of obviousness or nonobviousness must be based upon what
was known in the art at the time the invention was made. See 35 U.S.C. § 103: “A
patent may not be obtained . . . if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary skill in the
art” (emphasis added).
8 Orekhov et al, “Antiatherosclerotic and antiatherogenic effects of a calcium antagonist plus statin
combination: amlodipine and lovastatin,” Int’l Journal of Cardiology, Vol. 62 (Suppl. 2), pp. S67-S77 (Dec.
31, 1997).
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