Appeal 2007-0185
Application 10/305,281
Obviousness - Joshi
Claims 1-9 stand rejected under 35 U.S.C. § 103 over Joshi (Answer 4).
The Examiner contends that Joshi teaches a tablet composition employing 3
to 50% pravastatin and teaches that the tablet can be up to 1 gm in size. (Answer
5; Joshi, col. 2, l. 65 to col. 3, l. 4; col. 3, ll. 16-17.) The Examiner acknowledges
that Joshi does not particularly teach 80 and 160 mg of pravastatin in a tablet. The
Examiner concludes however, that one of ordinary skill in the art would have been
motivated to incorporate 80 and 160 mg of pravastatin into the composition of
Joshi, and that it is obvious to optimize such a dosage. (Answer 5.)
Appellants acknowledge
Joshi et al. disclose a pharmaceutical composition which may
contain from about 1 to about 60% pravastatin (preferably from about
3 to about 50% pravastatin) which composition may be in the form of
tablets up to 1 gram in size. Thus, a 1 gram tablet would contain 10 to
600 mg pravastatin, preferably 30 to 500 mg pravastatin.
(Br. 9.) Appellants, however, argue that the upper limit of medicament actually
shown in Joshi et al. is 40 mg, and that one of ordinary skill in the art would not
have been motivated to employ higher dosages of pravastatin. (Id.)
We disagree. We find that a person of ordinary skill in the art, at the time
the invention was made, would have found it obvious to optimize the amount of
drug in a tablet to treated the claimed condition. A minor modification of the prior
art, such as optimizing the amount of a particular ingredient, does not distinguish
the claimed product from the prior art. See KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1731, 82 USPQ2d 1385, 1396 (2007) (It is proper to “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”). See also id. at 1742, 82 USPQ2d at 1397 (“A person of ordinary skill is
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