Appeal No. 2007-1072
Application No. 09/872,250
expressly teach the combination of the oral contraceptives packs together in
a kit.”
The Examiner concludes:
One of ordinary skill in the art would have been
motivated to combine the oral contraceptive[ ] packs of 30mcg
and 20mcg of Ethinylestradiol together in a kit. Hodgen’s
method of reducing breakthrough bleeding has one drawback,
which cannot reduce the breakthrough bleeding in the first
cycle. Possessing the teachings of Endrikat, one of ordinary
skill in the art would reasonably expect to employ a regimen
comprising a dose of 30mcg of ethinylestradiol in the first cycle
in the Hodgen’s method in order to let the endometrium adapt
to the exogenous hormones as well as reduce the breakthrough
bleeding in the first cycle and thereby improving Hodgen’s
method.
Id. at 4.
Appellant argues that both Endrikat and Hodgen administer oral
contraceptives from one month to the next having “an identical content as
the oral contraceptive administered in the first month” (Br. 10).4 Appellant
asserts that it is only through the use of impermissible hindsight that one
would arrive at the claimed invention—a kit combining a high dose oral
contraceptive pack combined with a low dose oral contraceptive pack. Id. at
15. We agree, and the rejection is reversed.
“[T]he Examiner bears the burden of establishing a prima facie case
of obviousness based upon the prior art. ‘[The Examiner] can satisfy this
burden only by showing some objective teaching in the prior art or that
4 All references to the Brief are to the Revised Brief dated May 12, 2006.
3
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013