Appeal No. 95-3268
Application 07/521,695
"potentiating the activity of a somatotropin over prolonged periods of time" and "such that
the weight of the vertebrate, non-human continues to exceed that of a vertebrate, non-
human treated with the same amount of said somatotropin alone over a given period of
time" as claimed.
We find no error in the examiner's findings that Aston (I) taken with Guyton establish
a prima facie case of unpatentability of the subject matter of claims 23-25. We, therefore,
affirm the rejection of claims 23-25 under 35 U.S.C. § 102(b).
The rejections under 35 U.S.C. § 103
Claims 5-22 and 27-30:
A conclusion of obviousness under 35 U.S.C. § 103 must be based upon the
claimed subject matter as a whole. Accordingly, before turning to the merits of the
examiner's rejection, we must first determine what subject matter is claimed.
We read claims 5-22 and 27-30 to require, in relevant part, the administration of a
somatotropin and one or more monoclonal antibodies obtained from the deposited
hybridomas designated as PS-7.6 (ATCC HB 10416), PS-3.12 (ATCC HB 10415) and
PS-8.3 (ATCC HB 10417); no more and no less. The examiner has offered no evidence
or put forth no facts relating to the use of these specified monoclonal antibodies. It is the
initial burden of the patent examiner to establish that claims presented in an application for
patent are unpatentable. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445
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