Appeal No. 1997-1160
Application No. 08/036,566
GROUND OF REJECTION
Claims 24-272 are rejected under 35 U.S.C. § 103 as being unpatentable over the
PDR.
We reverse.
DISCUSSION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, and to the respective positions articulated by the
appellants and the examiner. We make reference to the examiner’s Answer3 for the
examiner’s reasoning in support of the rejection. We further reference appellants’ Brief.4
THE REJECTION UNDER 35 U.S.C. § 103:
The initial burden of presenting a prima facie case of obviousness rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The
PDR teaches dosage forms of the anti-Parkinson drugs trihexyphenidyl (ARTANE®), and
Carbidopa-Levodopa (SINEMET®), at concentrations within the claimed range, for the
treatment of paralysis agitans. The PDR does not teach applicants’ excipients, specifically
hydroxypropyl-cellulose, hydroxypropylmethylcellulose or polyvinylpyrrolidone.
2 We note the following typographical error (Answer, page 2). The examiner refers to
claims 23-27 in the rejection under 35 U.S.C. § 103. However, as noted by appellants
(Brief, page 2), claim 23 was canceled in the after final amendment received March 9,
1995 (Paper No. 15). The examiner’s Advisory Action (Paper No. 16, mailed March 2,
1995) indicated that this amendment would be entered upon the filing of an appeal and
that the rejection of claim 23 was now moot. Therefore, the statement of the rejection
should refer only to claims 24-27 (the only claims currently pending).
3 Paper No. 28, mailed September 10, 1996.
4 Paper No. 25, received April 1, 1996.
3
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