In re Hood invokes KSR
From In re Hood
As to enablement:
To the extent that Appellants are contending that Penner is not enabled, a reference is presumed to be enabled for the purpose of an anticipation rejection. See In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012) (“[W]e therefore hold that, during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement.”)
KSR is invoked:
The Supreme Court has emphasized that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. (...)
Applying the KSR standard of obviousness to the findings of fact, we agree with the Examiner that the ordinary artisan would have reasonably found it obvious to encapsulate either the active drugs or prodrugs of Penner into a microsphere as taught by Unger, since Unger teaches that ultrasound can be used to activate prodrug-containing microspheres (FF 15). Such a combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417.
Such a combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417.
Of substitution / obvious design choice:
An “[e]xpress suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982). As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” 550 U.S. at 421.
Yes, In re Best is cited:
We find that the Examiner has the better position. The Examiner contends that any change in the volume of the solution by contacting the drug with delivery fluid will necessarily modify the solubility. Since solubility is defined as “[t]he amount of a substance that can be dissolved in a given amount of solvent,”10 it is inherently necessary that as the amount of solvent changes, the solubility changes as well. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”) Appellants have provided no evidence to satisfy this burden.