Appeal 2006-3252
Application 09/536,728
1 KSR, no cogent rationale can justify granting Esser a patent to compounds
2 which the public is free to use to accomplish objectives described by Olson.
3 In this case, it turns out that the prior art ultimately shows that Esser
4 invented a new use of a group of known or obvious compounds described by
5 Olson. A new and unobvious use of a known compound may be patentable.
6 In this case, the Examiner thought the new use was patentable. Based on the
7 Examiner's assessment, the Director granted Esser Patent 6,268,389 to a
8 method for the treatment of urinary incontinence by administering
9 compounds, some of which fall within the scope of the Olson compounds.
10 We can agree that a method of delaying onset or interrupting egg production
11 with particular compound generally would not suggest the use of the same or
12 some of the same compounds to treat urinary incontinence. But, Esser's
13 discovery should not result in the public being precluded from using the
14 Olson compounds for Olson's purpose. That is exactly what would happen
15 if Esser is granted a patent with the compound claims now before us in this
16 appeal.
17 In a case, such as the case before us, where obviousness is based on a
18 single reference, Esser's argument that to be reasonably pertinent, a
19 reference must logically have commended itself to an inventor's attention in
20 considering an inventor's problem (Appeal Brief, page 6) misses the mark.
21 The question here is not whether Olson deals with Esser's problem. Rather,
22 it is whether Esser's claimed compounds are within the grasp of one of
23 ordinary skill in the art and thereby in the public domain.
24 In general, the question of "nonanalogous" art surfaces only where the
25 teachings of two or more patents are sought to be combined. Cf. Dann v.
26
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