Appeal 2007-1378
Application 10/327,459
1 when becoming convinced an applicant has a point with respect to one of
2 numerous rejections. If the Examiner, at the Examiner’s Answer stage, had
3 harbored any doubt about enablement, we would have had both an
4 enablement and obviousness rejection before us. Moreover, on the merits of
5 the rejections before us, Rouhi seems to be a “generic” discussion about
6 numerous problems and concerns in the pharmaceutical field. While
7 paroxetine hydrochloride and cefadroxil are mentioned (see page 30),
8 neither are azithromycins—a fact which immediately can be confirmed by
9 reference to the 2001 Physicians’ Desk Reference at pages 1003 and 3114.
10 Appellants’ reliance on Rouhi is not persuasive when weighed against the
11 explicit azithromycin teachings of Curatolo—a patent said to be owned by
12 appellants’ assignee. Curatolo convincingly shows that one skilled in the art
13 uses dry granulating or direct compression techniques to make azithromycin
14 tablets. Rouhi does not appear to mention azithromycin. For the reasons
15 given, as applied to the facts of this case, we credit the more relevant
16 teachings of Curatolo over the less relevant “teachings” of Rouhi.
17 Appellants maintain that the Examiner has used an “obvious to try”
18 standard. According to appellants an “obvious to try” standard is not an
19 appropriate standard. Appeal Brief, pages 12-13 and 16-17. This argument
20 goes nowhere. The Examiner did not make an obviousness holding based on
21 “obvious to try.” Moreover, an “obvious to try” argument is often made
22 when there is an issue of whether the evidence supports a finding that there
23 is a reasonable chance of success. In re O’Farrell, 853 F.2d 894, 7 USPQ2d
24 1673 (Fed. Cir. 1988). See also (1) In re Eli Lilly & Co., 902 F.2d 943, 945,
25 14 USPQ2d 1741, 1743 (Fed. Cir. 1990) (an "obvious-to-try" situation exists
18
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