Appeal No. 1997-1717
Application No. 08/068,256
The examiner’s position is speculative in nature; it is devoid of factual support or
adequate reasoning. Simply stated, it is not enough to speculate that the prior art
compounds may possess 5-lipoxygenase inhibiting activity and, based on speculation
alone, shift the burden of persuasion to appellants to establish that these compounds are
“completely inactive” as 5-lipoxygenase inhibitors. See In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). On this
record, the examiner cannot require appellants “to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.”
Having found that the examiner has not established a prima facie case of
obviousness of the appealed claims, we find it unnecessary to discuss the declaration of
Dr. Ahluwalia submitted on July 14, 1995 (attachment to Paper No. 11) and relied on by
appellants to rebut any such prima facie case.
The examiner’s rejection of claims 1 and 8 through 12 under 35 U.S.C. § 103 is
reversed.
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