Patent Interference No. 103,548
Discussion: Objective Evidence
"Once a prima facie case of obviousness has been established, the burden shifts
to the applicant to come forward with evidence of nonobviousness to overcome the
prima facie case." In re Huang, 100 F.3d 135, 139, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996). Lagrange has the burden of showing that the evidence of unexpected results is
sufficient to overcome the prima facie case of obviousness. In re Rouffet, 149 F.3d
1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Lagrange's (LB 17, paragraph
31.) evidence is in the form of declarations by Cotteret:
· Cotteret Declaration I (paper no. 35),
· Cotteret Declaration III (paper no. 41),
· Cotteret Declaration IV (paper no. 61), and,
· Cotteret Declaration V34 (paper no. 66).
By these declarations, Lagrange seeks to show that its claimed indolines exhibit
unexpected properties, namely unexpectedly improved uptake.
Lagrange's initial declaration evidence, Cotteret Declaration I, was addressed in the
Decision on Motions (paper no. 49, pp. 14-18), where it was found, along with Konrad's
rebuttal evidence of Höffkes Declaration 1, to be inconclusive on the question of
nonobviousness. The parties were given an opportunity to supplement their declaration
evidence, which the parties have done, including filing additional Cotteret declarations
and Hoffkes rebuttal declarations. In short, the parties have responded as follows:
34 Cotteret Declaration V does not provide results as such but rather responds to question raised in the
Decision on Motions.
31
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