Appeal No. 2000-0091
Application No. 08/732,254
anticipate the claims, the prior art must disclose delavirdine mesylate in the S
and T crystal forms. The examiner has provided no evidence or scientific
reasoning to show that the delavirdine mesylate disclosed and claimed by
Palmer is in either the S or T crystal form. Therefore, the examiner has not made
out a prima facie case of anticipation by inherency.
The examiner’s attempt to shift the burden of proof to Appellants was
premature. The burden shifts to the applicant only if the examiner can show, by
evidence or scientific reasoning, a reasonable basis for concluding that the prior
art product meets all the limitations of the claims. The examiner has provided no
basis for such a conclusion in this case. The rejection under 35 U.S.C. § 102 is
reversed.
3. Obviousness
The examiner rejected the claims under 35 U.S.C. § 103 on the basis that
Palmer “discloses the free form of the instant sulfonate salts for use in treating
HIV.” Examiner’s Answer, page 3. The examiner concluded that the
corresponding methanesulfonate salt would have been an obvious variant
because Palmer “teaches and in fact prefers the use of salt forms for better
solubility and crystallinity,” and methanesulfonate salts were exemplified for
compounds other than delavirdine mesylate. Id., pages 3-4.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
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