Appeal No. 1995-3021
Application 07/949,347
have been known in the prior art. The examiner has not presented a fact based analysis as to
why it would have been obvious to one of ordinary skill in the art to change the relative
proportions of these three known analgesic agents in the prior art compositions in order to arrive
at the claimed subject matter. Absent such a fact based explanation, we do not find that the
examiner has properly sustained his initial burden of establishing a prima facie case of
obviousness.
Even if we were to find that the examiner had established a prima facie case of
obviousness, the rejection could not be sustained. As mentioned above, appellant relies upon
the certification of Dr. Pasanen as objective evidence of obviousness. As set forth in
In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986):
If a prima facie case is made in the first instance, and if the
applicant comes forward with reasonable rebuttal, whether
buttressed by experiment, prior art references, or argument, the
entire merits of the matter are to be reweighed. In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Here, the only statement we have from the examiner in regard to Dr. Pasanen's
certification appears at page 6 of the Supplemental Examiner's Answer (Paper No. 25, May 18,
1998) where the examiner indicates that the certification of Dr. Pasanen had been considered
but “is not deemed persuasive since the certification does not disclose the dosage range of
codeine set forth in applicant's claim 1.” It is not clear what the examiner means from this
statement. Again, what is needed is a fact based explanation why the rebuttal evidence relied
upon by appellant is not entitled to sufficient weight so as to outweigh the evidence of
obviousness relied upon by the examiner, here, The Merck Index.
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