Appeal No. 1998-0370
Application No. 08/568,410
probative if it does not address the facts of record. In re Beattie, 974 F.2d 1309, 1313, 24
USPQ2d 1040, 1042-43 (Fed. Cir. 1992).
When the prior art appears to provide a product identical to the product claimed, the
Appellants have the burden to submit evidence, commensurate in scope with the claims, that
the products are different. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed.
Cir. 1990). Appellants have failed to direct us to evidence that the compositions of
Kitamura which exclude protease inhibitors are different from the compositions of claim
1.
The rejection of claims 1 and 3-10 under U.S.C. § 103 as being unpatentable over
the combination of Kitamura, 21 CFR § 173.315 and the admitted prior art is affirmed.
NEW REJECTIONS
Under the provisions of 35 U.S.C. § 196(b), we make the following new grounds of
rejection.
I.
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable over the
combination of Kitamura, 21 CFR § 173.315 and the admitted prior art as applied to claims
1 and 3-10 above. Claim 2 adds the following limitation to the subject matter of claim 1:
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