Appeal No. 2006-1397 Page 3
Application No. 10/275,377
DISCUSSION
According to the examiner,
Fontana [ ] teach[es] stolonoxide compounds 1 and 1a
(cyclic peroxides). Fontana [ ] teach[es] the methods of use of
cyclic peroxides for inhibiting tumor cell growth (anti-cancer), as
anti-malaria and anti-microbial. Therefore, the Examiner assumes
compounds 1 and 1a have anti-cancer activity absent a showing to
the contrary. See page 429, paragraph 1.
Final Office Action, mailed 12/23/04, page 2.
The difference between the prior art and the claims, as set forth in the
rejection, is that the claimed invention is drawn to a stolonoxide compound (I)
and its isomer and their use in methods of treating cancer, and that Fontana fails
to teach the claimed isomers and their use in treating cancer. See id. at 3. The
rejection concludes:
However, a novel and useful isomer is prima facie obvious
absent a showing of new and unexpected utilities. In re Norris, 84
USPQ 458 (1950). Therefore, the instant invention is prima facie
obvious from the teaching of Fontana [ ]. One of ordinary skill in
the art would have known to claim the compound, its isomers and
their utility as anti-cancer at the time the invention was made. The
motivation to claim stolonoxide, its isomers and their utility as anti-
cancer agents is from the teaching of Fontana [ ], that cyclic
peroxides have anti-cancer activities with the expectation that
stolonoxide and its isomers being cyclic peroxides would have
similar chemical and biological activities.
Id.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
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