Appeal 2007-0741
Application 09/313,625
elements in the fashion claimed” (KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1740-41, 82 USPQ2d 1385, 1396 (2007)). “[T]his analysis should be
made explicit” (id.), and it “can be important to identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does” (id.).
In the present case, we find that the Examiner has not established that
one of ordinary skill in the art would have had a reason to combine the
references relied on in the manner claimed. In our opinion, the Examiner’s
rationale is based on an oversimplified interpretation of the teachings of the
prior art.
It is true that Young teaches administering “a true antiestrogen, on a
regular basis for an extended period of time, in the absence of administration
of estrogen” to “postmenopausal or estrogen deficient subjects” (Young, col.
4, ll. 43-46). But Young also teaches that “[p]ostmenopausal women treated
with estrogen-progestin combinations . . . frequently experience regular
uterine bleeding which is unacceptable to many of them” (Young, col. 2, ll.
54-57). Moreover, while Peters does discuss controlling uterine bleeding
with progestins, the discussion appears to be focused on uterine bleeding in
pre-menopausal women (“These compounds find a wide range of beneficial
applications in human therapy. . . . includ[ing], for example, in addition to
suppressing ovulation in the human female, control of uterine bleeding,
treatment of amenorrhea and dysmenorrhea, alleviation of endocrine
disorders, and treatment of infertility.” (Peters, col. 1, ll. 36-40)).
That being the case, and keeping in mind that SERMs were known in
the art to exhibit complex, estrogen-like effects in some tissues, and anti-
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