Ex parte EDGREN et al. - Page 3

                  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                   

                         We reverse.                                                                                       
                         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.                                                                  


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