Appeal No. 95-3268
Application 07/521,695
ordinary skill in this art to substitute porcine somatotropin and its antibodies for the growth
hormone and antibodies of Aston (I). Where, as here, a prima facie case of obviousness
has been established, the burden of going forward shifts to the appellants. In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984), In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147, (CCPA 1976).
The appellants have offered no arguments or evidence to indicate that one of
ordinary skill in this art would have expected any difference in results in the methodology of
Aston (I) if porcine somatotropin were substituted for the human growth hormone
specifically disclosed.
In rebuttal, appellants' urge (principal brief, pages 20 and 21) that Aston (I) does not
teach:
the novel concept that administration of an antibody to a somatotropin
together with that somatotropin potentiates the activity of the somatotropin
over prolonged periods of time, such that the weight of the vertebrate
continues to exceed that of a vertebrate treated with the same amount of the
somatotropin alone.
However, as we pointed out in our consideration of the rejection of claims 23-25
under 35 U.S.C. § 102(b), supra, this functional language is not defined in the specification
and does not serve to distinguish the claimed subject matter from the disclosure of Aston
(I).
To the extent that appellants have attempted to compare the claimed method with
that of Aston (I) (principal brief, pages 9-16 and 21-22), we note that there are no side-by-
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