Appeal No. 2005-0027
Application No. 09/777,874
Where the prior art, as here, gives reason or motivation to make the claimed
invention, the burden then falls on an appellant to rebut that prima facie case. Such
rebuttal or argument can consist of any other argument or presentation of evidence that
is pertinent. In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990) (en banc), cert. denied, 500 U.S. 904 (1991).
The appellant presents a Declaration under 37 CFR 1.132 of Franco Gaetani in
rebuttal to the examiner's prima facie case. Appellant argues that Tables 2, 4 and 5 of
the declaration provide evidence of the synergistic effects of the claimed combination of
acetyl carnitine and hydroxycitric acid. Brief, page 7. Appellant argues that the
“embolded results in each Table below [reproduced in part in the Brief, page 8] show
the effects of the combination of acetyl L-carnitine and HCA are far greater that the
effects of either compound alone.” Brief, pages 7-8. Appellant also argues that he has
established the statistical significance of the results using the Student T-test. Brief,
page 8.
The examiner responds, arguing that “the values for hydroxycitrate at 1g/100 g
and 2 g/100 g diet in the table on page 3 of the Declaration are 46.6 +4.1 and 38.9 +3.8
respectively, compared to the control values of 62.8 + 3.5: the value for acetyl carnitine
at 2 g/100 g diet 60.4 + 7.1 (this value is almost the same as the control): the combined
value of hydroxycitrate and acetyl-carnitine as noted form this table is 31.6 +3.9. This
value is the same as observed with hydroxycitrate taking into consideration the
stand[ard] deviation. This value is not even additive.” Answer, page 5. The examiner
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