Appeal No. 1997-2795 Application No. 08/438,933 prior art as to render the instant products prima facie obvious to the worker of ordinary skill in the art at the time the invention was made” (answer, page 7) and, therefore, “the burden is on the appellants to show a novel or unobvious difference between the claimed products and the product of the prior art” (answer, page 8). We disagree.4 While the heparin derivatives of the prior art do show a sulfur content, i.e., degree of sulfation, equal to or higher than the starting heparin from which they were derived, they have molecular weights lower than that of the starting heparin. In fact, both the anti-Xa activities and APTT/anti-Xa ratios of the derivatives of Naggi ‘063, to the extent that they are disclosed, do not meet the limitations of the heparin derivatives in the claimed invention. Moreover, Naggi ‘063 explicitly states that it is the anti- Xa/APTT ratio which allows evaluation of “the anticoagulant component of the potential antithrombotic activity of the depolymerized and supersulfated heparins of the present invention without associated hemorragic risks” (col. 9, lines 20-24). Given the difference in anti-Xa/APTT (or APTT/anti-Xa) ratio between the heparin derivatives of Naggi ‘063 and the claimed derivatives in combination with the 4As stated in In re Best, 562 F.2d 1252, 1255-56, 195 USPQ 430, 433-34 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. ... Whether the rejection is based on 'inherency' under 35 U.S.C. § 102, on 'prima facie obviousness' under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products. - 9 -Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007