Appeal 2007-0741
Application 09/313,625
Obviousness
Claims 1, 2, 10, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Young3 and Peters.4 The Examiner found that
• Young teaches SERMs for treating estrogen deficiency, and
clomiphene is specified (Answer 3);
• Applicants disclose that it is known in the art that SERMs
raise estrogen levels, which are responsible for the side effect
of uterine bleeding (id.); and
• Peters teaches that it is known in the art to use levonorgestrel
to control uterine bleeding (id.).
According to the Examiner, “[i]t would have been obvious to one of
ordinary skill in the art . . . to add levonorgestrel to the treatment of Young
to achieve the beneficial effect of controlling uterine bleeding in view of
Peters” (id.).
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966). “Often, it will be necessary . . . to look to
interrelated teachings of multiple [references] . . . and the background
knowledge possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reason to combine the known
3 U.S. Patent 4,729,999 to Young, issued March 8, 1988.
4 U.S. Patent 5,116,865 to Peters et al., issued May 26, 1992.
4
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