Appeal No. 2001-1909 Page 12
Application No. 09/016,786
causing the vitamin to be released over a “substantially continuous 24-hour”
period to include the night, thereby extending the bioavailability of the vitamin to
coincide with the act of sleeping and concurrently optimizing nerve tissue repair.
For the foregoing reasons, examiner should first interpret the claims in
light of the specification, being certain that the interpretation to be applied
complies with the written description requirement of the first paragraph of 35
U.S.C. § 112. Based on that interpretation, examiner should then analyze the
scope of the claims before making a patentability determination over the prior
art.
Reason #6
One of the arguments that appellants make in their Brief (see p. 37), in
rebuttal to the rejections of the claims under 35 U.S.C. § 103 over the primary
reference Koltringer, is that Koltringer discloses two active ingredients (Gingko
bilobae extract and a vitamin B complex) in contradistinction with the claimed
process of administering a vitamin B complex alone. Examiner’s response
(Examiner’s Answer, p. 4) is that “applicant has not shown that the other
components in prior art teachings are detrimental in instant compositions.”
Notwithstanding that it is examiner’s burden, not appellants’, to establish a
prima facie case of obviousness and therefore it is examiner who has the burden
of showing that why one of ordinary skill would be led to modify the Koltringer
method to solely administer a vitamin B complex, the use of a vitamin B as the
sole active ingredient is well known. To that end, we cite U.S. Patent 4,945,083
(Jansen et al.) and U.S. Patent 4,432,975 (Libby). We also cite a publication
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