“all of said functional limitation and, as such anticipate the claim designated invention.”
However, the burden of proof rests with the examiner to establish a prima facie
case of anticipation. We determine that none of the references teach each of the
elements required by the claimed subject matter. Accordingly, we reverse the
rejection on the grounds of anticipation.
The Rejection under Section 103--Obviousness
“[T]he examiner bears the initial burden, on review of the prior art or on any other
ground, of presenting a prima facie case of unpatentability.” See In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). The examiner
relies upon a combination of three references to reject the claimed subject matter
and establish a prima facie case of obviousness. The premises of the rejection are
that in the event that appellants show that the references do not inherently contain
the designated functional limitations of the claimed subject matter, “it would have been
obvious to those of ordinary skill in the art that minor variations in the relaxivity,
molecular weight size, etc. could be made so as to produce the most suitable
composition for magnetic resonance imaging.” See Answer, page 4. We disagree.
In our view, not only does each of the references fail to teach the requisite
relaxivities of the claimed subject matter, they fail to teach an MRI contrast medium
having the requisite claimed characteristics that would result in obtaining the
relaxivities of the claimed subject matter.
We find that Klaveness is directed MRI containing super paramagnetic particles and
a chelating agent. See Abstract. Chelating agents are disclosed. See page 7, and
especially pages 8 and 9. However, there is nothing to show that any of the chelating
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