Appeal No. 2006-0760
Application No. 10/312,417
patents are not granted for merely following the suggestion of the prior art in
a manner commensurate with the level of ordinary skill in the art.
Appellant argues that there was no motivation to have excluded CMO
from Levin’s delivery device (Br. 9). We are not persuaded. Appellant’s
own evidence establishes that both celecoxib and rofecoxib are administered
in the prior art alone, without CMO. (See Exhibits 1 and 2.) As pointed out
by the Examiner (Answer 9), Example 3, which Appellant relies on for his
“teaching away” theory, includes doxycycline in addition to a Cox-2 agent
(Levin at 14, ll. 20). Consequently, it is not clear whether the side effects
are due to the Cox-2 agent, its combination with doxycycline, or the
doxycycline alone.
Appellant also urges that Lee does not teach or suggest administering
Cox-2 inhibitors because its disclosure is directed to the delivery of nicotine
and melatonin, which differ “structurally and functionally” from Levin’s
compounds (Br. 10-11.) We disagree with Appellant’s characterization of
Lee’s disclosure. Lee’s specific working examples show delivery of
nicotine and melatonin (cols. 9 to 11), but its disclosure suggests numerous
other therapeutic agents (col. 7, l. 60 to col. 8, l. 22) that may be
administered in his transdermal delivery device. In evaluating the scope and
content of the prior art, “[a]ll the disclosures in a reference must be
evaluated . . . a reference is not limited to the disclosure of specific working
examples.” In re Mills, 470 F.2d 649, 651, 176 USPQ 196, 198 (CCPA
1972). The structural diversity of agents5 described by Lee as useful for
5 For example: nicotine, melatonin, steroids, and non-steroids. Col. 7, l. 62
to col. 8, l. 14.
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