Appeal No. 2003-1034 Page 2
Application No. 08/897,455
BACKGROUND
The claims are drawn to a corticoid 17,21-dicarboxylic ester or corticoid
17-carboxylic ester 21 carbonic ester of a specified formula. Claims 11-17 are
pending. Claim 11 is representative of the claims on appeal and is reproduced in
the attached appendix.
The Examiner relies upon the following references:
Oughton et al. (Oughton) 3,133,940 May 19, 1964
Bowers et al. (Bowers) 3.201,391 Aug. 17, 1965
Djerassi et al. (Djerassi) 3,201,429 Aug. 17, 1965
Page et al. (Page) 4,655,971 Apr. 7, 1987
Claims 11-17 stand rejected under 35 U.S.C. § 103(a) as being obvious
over Page. Claims 11, 12 and 14-17 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Djerassi. Claims 11, 12 and 15-17 stand rejected under 35
U.S.C. § 103(a) as being obvious over Bowers. And finally claims 11, 12, 13 and
15 stand rejected under 35 U.S.C. § 103(a) as being obvious over Oughton.
VACATUR AND REMAND
The board serves as a board of review, not a de novo examination
tribunal. See 35 U.S.C. § 6(b) (“The [board] shall, on written appeal of an
applicant, review adverse decisions of examiners upon applications for
patents.”). The burden is on the examiner to set forth a prima facie case of
obviousness. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99
(Fed. Cir. 1988). Findings of fact and conclusions of law must be made in
accordance with the Administrative Procedure Act, 5 U.S.C. § 706 (A), (E)
(1994). See Zurko v. Dickinson, 527 U.S. 150, 158, 119 S.Ct. 1816, 1821,
50 USPQ2d 1930, 1934 (1999). Findings of fact relied upon in making the
obviousness rejection must be supported by substantial evidence within the
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