Appeal No. 1997-3275
Application No. 07/963,329
The examiner has provided no facts or evidence which would reasonably establish
that administration of IGF-1 to a mammal would have any particular pharmacological effect
on the photoreceptors. In our opinion, the references relied upon, taken in combination,
would not have suggested to one of ordinary skill in this art at the time of the invention, that
the administration of IGF-1 would have likely resulted in promoting the survival of
photoreceptors as presently claimed. Only appellants' specification provides any
suggestion that administering IGF-1 to a mammal would serve to promote the survival of
photoreceptors at risk of dying. However, use of this information as a basis for
establishing a prima facie case of obviousness, within the meaning of 35 U.S.C. § 103,
would constitute impermissible hindsight.
Thus, in our opinion, the examiner has failed to provide those facts or evidence
which would reasonably support a conclusion that the claimed subject matter would have
been prima facie obvious within the meaning of 35 U.S.C. § 103. Where the examiner
fails to establish a prima facie case, the rejection is improper and will be overturned. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.1988). Therefore, this
rejection of claim 1 under 35 U.S.C. § 103 is reversed.
In rejecting the claims under the judicially created doctrine of obviousness-type
double patenting, the examiner initially focuses on claim 1 of U.S. Patent 5,093,317 to
Lewis and states that the patent is (Answer, page 10):
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