Appeal No. 1997-2756
Application 08/242,728
It is the initial burden of the patent examiner to establish that claims presented in an
application for a patent are unpatentable. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d
1443, 1445 (Fed. Cir. 1992). We have carefully considered the evidence and discussion
in support of the rejection presented by the examiner as well as the arguments and
evidence presented by the appellants. On balance, a fair evaluation of the reference,
applicants' specification and consideration of the claimed subject matter as a whole,
dictates a conclusion that the examiner has established a prima facie case of
unpatentability as to the subject matter of claim 6 which has not been overcome by
appellants' arguments or evidence. Thus, on the record before us, we find no error in the
examiner's determination that the subject matter of claim 6 is unpatentable over the
disclosure of Roth. We, therefore, affirm the rejection of claim 6 under 35 U.S.C. § 103.
Claim 3:
Claim 3 differs from claim 6 in being directed to a method of inhibiting proliferation
of human airway smooth muscle cells using an antithrombin agent. Roth does not describe
such a method and the examiner has offered no evidence which would supply that which is
missing from this reference. While Roth may describe the use of nedocromil sodium for
the treatment of asthma, that is not what is claimed. A patentability determination must
begin with the scope of the claims being ascertained. Panduit Corp. v. Dennison Mfg. Co.,
810 F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert denied, 481 U.S. 1052
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