Appeal No. 2006-2587 Page 5
Application No. 09/879,710
such as the vasocontrictive agent required by Meisner composition. In re Herz,
537 F.2d 549, 551, 190 USPQ 461, 463 (CCPA 1976). As discussed above,
appellants’ brief discloses, page 5, emphasis added, “a primary goal of the
present invention was the development of effective pharmacological treatments
to counteract hypotension and shock without the deleterious side effects
associated with the use of vasoconstricting agents.” (Spec. p. 2, lines 11-19
[sic]). In our opinion, a person of ordinary skill in the art would recognize that
adding a vasoconstricting agent to appellants’ claimed composition would be
counter to the primary goal of the invention. Stated differently, adding a
vasoconstrictive agent such as a precursor or stimulant of epinephrine or nor-
epinephrine production selected from tyrosine, and phenylalanine, to appellants’
claimed invention would affect the basic and novel characteristics of appellants’
claimed invention. Accordingly, we are not persuaded by the examiner’s
arguments to the contrary.
On reflection, we find that the weight of the evidence falls in favor of
appellants in that “a precursor or stimulant of epinephrine or nor-epinephrine
production selected from tyrosine, and phenylalanine” will materially affect the
basic and novel characteristics of appellants’ claimed invention. As such, since
Meisner’s composition requires that such a precursor or stimulant be present in
the composition, Meisner cannot anticipate appellants’ claimed invention.
Accordingly, we reverse the rejection of claims 2, 3, 8 and 10 under
35 U.S.C. § 102(b) as anticipated by Meisner.
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