Ex parte AHLUWALIA et al. - Page 5




              Appeal No. 1997-1717                                                                                           
              Application No. 08/068,256                                                                                     

                      The examiner’s position is speculative in nature; it is devoid of factual support or                   
              adequate reasoning.  Simply stated, it is not enough to speculate that the prior art                           
              compounds may possess 5-lipoxygenase inhibiting activity and, based on speculation                             
              alone, shift the burden of persuasion to appellants to establish that these compounds are                      
              “completely inactive” as 5-lipoxygenase inhibitors.  See In re Warner, 379 F.2d 1011,                          
              1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).   On this                             
              record, the examiner cannot require appellants “to prove that the subject matter shown to                      
              be in the prior art does not possess the characteristic relied on.”                                            
                      Having found that the examiner has not  established a prima facie case of                              
              obviousness of the appealed claims, we find it unnecessary to discuss the declaration of                       
              Dr. Ahluwalia submitted on July 14, 1995 (attachment to Paper No. 11) and relied on by                         
              appellants to rebut any such prima facie case.                                                                 
                      The examiner’s rejection of claims 1 and 8 through 12 under 35 U.S.C.  103 is                         
              reversed.                                                                                                      















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