Appeal 2007-1378
Application 10/327,459
1 when a general [prior art] disclosure may pique the scientist's curiosity, such
2 that further investigation might be done as a result of the [prior art]
3 disclosure, but the [prior art] disclosure itself does not contain a sufficient
4 teaching of how to obtain the desired result, or that the claimed result would
5 be obtained if certain directions were pursued) and (2) Pfizer, Inc. v. Apotex,
6 Inc., 480 F.3d 1348, 1365, 82 USPQ2d 1321, ____ (Fed. Cir. 2007). There
7 is no legitimate “obvious to try” issue in this case since the prior art tells one
8 skilled in the art precisely how to make “operable” tablets. Not only is there
9 a reasonable chance of success in this case—there is no doubt a skilled
10 artisan would be successful.
11
12 G. Conclusions of law
13 Appellants have not sustained their burden on appeal of showing that
14 the Examiner erred in rejecting the claims on appeal as being unpatentable
15 under 35 U.S.C. § 103 over (1) Tenengauzer or (2) the combination of
16 Singer and Curatolo.
17 On the record before us, appellants are not entitled to a patent
18 containing the claims on appeal.
19
20 H. Decision
21 ORDERED that the decision of the Examiner rejecting the
22 claims on appeal under 35 U.S.C. § 103(a) over Tenengauzer is affirmed.
23 FURTHER ORDERED that the decision of the Examiner
24 rejecting the claims on appeal under 35 U.S.C. § 103(a) over the
25 combination of Singer and Curatolo is affirmed.
19
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