Appeal No. 95-1083
Application No. 08/004,444
(Answer, page 6). Weiss, Petkau and Fretland are relied on as teaching "that superoxide
dismutase related compounds similar to those of the primary references are known in the
art for treatment of inflammatory bowel diseases" (Answer, page 7). The examiner
concludes (Answer, page 7):
One having ordinary skill in the art would have been motivated, absent
evidence to the contrary, to employ the claimed compound in methods and
compositions for the treatment and/or prevention of
inflammatory bowel disease since it is an inflammatory condition and since
substantially related compounds were known in the art for their superoxide
dismutase related activity, which activity was known to be useful in the
treatment of inflammatory bowel disease.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that burden is met, does the burden of
coming forward with evidence or argument shift to the applicant. Id. The burden is on the
examiner to provide a reason, based on the prior art, or knowledge generally available in
the art as to why it would have been obvious to one of ordinary skill in the art to arrive at the
claimed invention. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
297, n.24, 227 USPQ 657, 667, n.24 (Fed. Cir. 1985). If the examiner fails to establish a
prima facie case, the rejection is improper and will be overturned. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.1988).
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