Appeal No. 1996-1009
Application No. 07/949,551
show a sulfur content, i.e., degree of sulfation, equal to or higher than the starting heparin from which
they were derived, they have molecular weights lower than that of the starting heparin. In fact, both the
anti-Xa activities and APTT/anti-Xa ratios of the derivatives of Naggi ‘063, to the extent that they are
disclosed, do not meet the limitations of the heparin derivatives in the claimed invention. Thus, the
examiner has not met her burden of establishing that the heparin derivatives of the prior art are identical
or substantially identical to those of the claimed invention and, therefore, the burden has not switched to
appellants to prove that the prior art heparin derivatives do not necessarily or inherently possess the
characteristics of the heparin derivatives of the claimed invention.
Furthermore, it is well established that inherency and obviousness are different concepts. In re
Shetty, 566 F.2d 81, 86, 195 USPQ 753, 756 (“inherency is quite immaterial if ... one of ordinary skill
in the art would not appreciate or recognize that inherent result.”); In re Spormann, 363 F.2d 444,
448, 150 USPQ 449, 452 (“the inherency of an advantage and its obviousness are entirely different
questions. That which may be inherent is not necessarily known. Obviousness cannot be predicated
on what is unknown.”). A conclusion of obviousness must be based on evidence, not unsupported
arguments.
Based on the foregoing, we conclude that the examiner has not established a prima facie case
of obviousness as to claim 15. Since all the limitations of independent claim 15 are not disclosed or
suggested by the applied prior of Naggi ‘063, Naggi ‘881, Petitou or Conti, we will not sustain the
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