Appeal 2006-3252
Application 09/536,728
1 Olson, unlike the facts involving the rejection based on Stähle,
2 provides a reason why one skilled in the art would have found it obvious to
3 substitute ethyl groups on the compound of Olson represented by Formula 6
4 with methyl groups. Olson contains an express suggestion to do so with its
5 alkyl having 1-3 carbons teaching. Moreover, given the presumption that
6 the subject matter claims by Olson is enabling, In re Spence, supra, there is
7 no reason to believe one skilled in the art would not have been inclined to
8 follow the overall teachings of Olson.
9 Esser's argument in favor of patentability over Olson
10 Esser's arguments for patentability over Olson appear on pages 5-8 of
11 the Appeal Brief and pages 1-2 of the Reply Brief.
12 Esser argues that Olson is "nonanalogous" art and therefore the
13 Examiner's rejection cannot stand.
14 Apparently, what Esser contends is that Olson is essentially irrelevant
15 since it concerns delaying the onset of egg production in young pullets and
16 interrupting the egg production in mature laying hens whereas Esser is
17 concerned with treating urinary incontinence.
18 Esser's pre-KSR argument is now foreclosed. KSR makes a couple of
19 points relevant to Esser's argument. First, KSR tells us that what matters is
20 the "objective reach of the claim." 127 S. Ct. at 1742, 82 USPQ2d at 1397.
21 Second, KSR also tells us that in evaluating obviousness we are not to be
22 confined "to the problem the patentee was trying to solve." 127 S. Ct. at
23 1742, 82 USPQ2d at 1397. The Federal Circuit has expressed similar
24 reasoning in a case involving teachings from a combination of two or more
25 references to meet the objective reach of a claim. In re Kemps, 97 F.3d
24
Page: Previous 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 Next
Last modified: September 9, 2013