Even if these findings were true, 7 they themselves would not
establish a prima facie case of obviousness. As already
noted, a prima facie case requires a desirable reason to
modify a reference to reach the claimed invention.
But in this rejection conspicuously absent from the
record is any reason to modify the teachings of *** [the PCT
application] to include, e.g., "an effective amount of a
heterocyclic compound" of the claimed invention. Therefore,
the rejection is improper and should be reversed.
21. The examiner provided a complete answer to
applicants' argument by referring in the Examiner's Answer
(Paper 12, page 4, line 1) to page 42 of the PCT application.
There described are "pharmaceutical compositions comprising a
therapeutically *** effective amount of the compound and a
pharmaceutically acceptable carrier or excipient" (PCT
application, page 42, lines 15-17). 8
22. Applicants in the Appeal Brief (Paper 11, page 3)
argue as follows with respect to the examiner's rejection based
on the PCT application:
According to the Examiner, *** [Hamilton] discloses
compounds of some of the rejected claims and their use in
compositions. Office action of 5/7/2, p. 2, ll. 14-17.
Even if these findings were true, 9 they themselves would not
establish a prima facie case of obviousness. Neither urging
7 In the Appeal Brief, applicants do not explain why "these findings" are
wrong or otherwise are not supported by the evidence.
8 We believe applicants' sole argument for reversal with respect to the
PCT application borders on frivolous. In this respect, we note that no reply
brief was filed to respond to the Examiner's Answer.
9 See n.7.
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