Appeal No. 1997-2356
Application 08/109,798
appellants’ arguments thereagainst. As a consequence of our review, we make the
determinations which follow.
DECISION ON APPEAL
35 U.S.C. § 103
Claims 1-11 stand rejected under 35 U.S.C. § 103 as obvious over Finkenaur in
view of Pignatti, Wang and Diem.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is established
when the teachings from the prior art itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the art. In re Bell, 991 F.2d 781, 783, 26
USPQ2d 1529, 1531 (Fed. Cir. 1993). An obviousness analysis requires that the prior art
both suggest the claimed subject matter and reveal a reasonable expectation of success
to one reasonably skilled in the art. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991). With this as background, we analyze the prior art applied by the
examiner in the rejection of the claims on appeal.
In the present case, Finkenaur is relied on for establishing aqueous, stabilized
formulations containing growth factors, such as epidermal growth factor (EGF) and nerve
growth factor (NGF). Finkenaur, page 2, lines 36-55. The formulations may include water
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