Appeal No. 1996-1009
Application No. 07/949,551
say that these different diseases are not related, i.e., are not all cardiovascular diseases. However, a
treatment for one cardiovascular disease may or may not be indicated as the treatment for another
cardiovascular disease any more than a treatment for a first-degree burn may or may not be indicated
for the treatment of a third-degree burn. Therefore, while it may be plausible to use heparin/heparin
derivative therapy to treat a patient with angina pectoris because it can be used to treat a patient with a
less severe cardiovascular disease, i.e., atherosclerosis, the examiner has not established that one of
ordinary skill in the art would have reasonably expected such therapy to be successful in the treatment
of angina pectoris.
Assuming arguendo that it would have been obvious to treat a patient with angina pectoris with
a heparin derivative, the question becomes whether the specific heparin derivatives recited in the
claimed invention would have been obvious over the heparin derivatives described by Naggi ‘063,
Naggi ‘881, Petitou or Conti. Insofar as the examiner appears to making an In re Best type of
analysis, we answer this question in the negative. While the heparin derivatives of the prior art do4
4 As stated in In re Best, 562 F.2d at 1255, 195 USPQ at 433-34 (CCPA 1977):
Where, as here, the claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the characteristics of his
claimed product. ... Whether the rejection is based on 'inherency' under 35 U.S.C. § 102, on 'prima
facie obviousness' under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and
compare prior art products.
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