Wednesday, January 08, 2014

Appellant wins on obviousness in Ex parte Frazer; Unigene v. Apotex cited

From Ex parte FRAZER

As to obviousness:

Obviousness requires more than a mere showing that the prior art includes separate references covering each separate limitation in a claim under examination. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). Rather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention. Id. at 421, 127 S.Ct. 1727.
Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011).

Examiner failed to establish an evidentiary basis on this record to support a conclusion that Schiller or the combination of MacInnes and Dietrich makes up for the foregoing deficiencies in the combination of Tobery, Hinkula, and Delogu (see FF 4-5; App. Br. 20 (“Examiner proposes to apply to Schiller the teachings of Tobery [] in order to achieve what is achieved in Schiller alone”);

Result: The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.


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