Appeal 2007-1820
Application 10/659,408
(“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.”); Pfizer Inc. v. Apotex Inc. ,
480 F.3d. 1348, 1368, 82 USPQ2d 1321, 1335-36 (Fed. Cir. 2007).
Appellants urge that the claimed time periods are critical (Appeal Br. 6), but
they have provided no evidence of it. Arguments of counsel cannot take the
place of evidence lacking in the record. Estee Lauder Inc. v. L’Oreal, S.A.,
129 F.3d 588, 593, 44 USPQ2d 1610, 1615 (Fed. Cir. 1997).
In regard to the limitation in claim 18 that therapy is modified when
deviations of more than “5 ppb based on an exhalation rate of 50 mL/sec”
are observed, we likewise conclude that choosing the specific values at
which to modify therapy is routine optimization well within the average
level of skill in the art. See above Aller, 220 F.2d at 456, 105 USPQ at 235.
Moreover, Moilanen states that its method can be used to “follow-up drug
treatment” (FF 4) and Kharitonov suggests NO may be of use “in monitoring
whether therapy is adequate” (FF 7). While neither expressly states that
therapy should be modified when monitoring shows a rise in NO levels,
what else could have been meant? The purpose of monitoring therapy is to
determine when it’s not working so the physician can intervene. Physicians
– who are the persons of skill in the art in this field – conventionally adjust
therapy in response to a patient’s condition.
For the foregoing reasons, we conclude that the Examiner did not err
in finding claims 18-27 as obvious over Moilanen in view of Kharitonov.
The rejection is affirmed.
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