Appeal No. 1997-3275
Application No. 07/963,329
Since the art teaches that IGF-1 generally produces a
beneficial effect and stimulates or enhances a number of
positive activities (including survival) in various types of
neurons, there is a reasonable expectation that IGF-1 will
produce the same effect in a particular type of neuron, namely,
photoreceptor cells. Fingl et al. teach that the determination of
effective dosage for treatment in humans was known and
routine. It is further noted that all living cells are at risk of dying.
Accordingly, claim 1 is prima facie obvious over the prior art,
absent sufficient objective factual evidence to the contrary.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that burden is met, does the burden of
coming forward with evidence or argument shift to the applicants. Id. In order to meet that
burden the examiner must provide a reason, based on the prior art, or knowledge
generally available in the art as to why it would have been obvious to one of ordinary skill
in the art to arrive at the claimed invention. Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 297, n.24, 227 USPQ 657, 667, n.24 (Fed. Cir. 1985,.
cert. denied, 475 U.S. 1017 (1986). Moreover, the prior art must also establish that one
would have had a reasonable expectation of achieving the present invention, i.e., a
reasonable expectation of success. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991). Both the suggestion and the reasonable expectation of success
must be found in the prior art, not in appellants’ disclosure. In re Dow Chemical Co., 837
F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
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