Appeal No. 1997-1830
Application No. 08/389,860
long-term administration, such as that recited in the claims, was not an obvious
dosage regimen.
The examiner initially disparaged the Karpf declaration as “based on
opinion without supporting data.” Advisory Action, paper no. 9. In the
Examiner’s Answer, the examiner made only slightly more effort to address the
factual contentions in the Karpf declaration, and concluded that Dr. Karpf’s
statement that bisphosphonates were being tested for treatment of fractures
actually supports the rejection.
The proper analysis of evidence submitted in response to a prima facie
case of obviousness has been summarized as follows:
When prima facie obviousness is established and evidence is
submitted in rebuttal, the decision-maker must start over. Though
the burden of going forward to rebut the prima facie case remains
with the applicant, the question of whether that burden has been
successfully carried requires that the entire path to decision be
retraced. An earlier decision should not . . . be considered as set in
concrete, and applicant’s rebuttal evidence then be evaluated only
on its knockdown ability.
In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). The
facts supporting the examiner’s prima facie case are entitled to no more weight
than the facts submitted to rebut it.
Prima facie obviousness is a legal conclusion, not a fact. Facts
established by rebuttal evidence must be evaluated along with the
facts on which the earlier conclusion was reached, not against the
conclusion itself. Though the tribunal must begin anew, a final
finding of obviousness may of course be reached, but such finding
will rest upon evaluation of all facts in evidence, uninfluenced by
any earlier conclusion reached . . . upon a different record.
Id.
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007