Appeal No. 1998-2267
Application 08/339,084
which can be correlated to any human liver disease, much less the treatment of NASH.
Declaration, page 3. In sum, appellant argues the examiner has failed to show that one of
ordinary skill in the art would consider the conditions of Podda and Shironaga to be
equivalents of NASH. Brief, pages 11-12.
In response to appellant’s arguments and evidence, the examiner indicates that the
rejection of the claims “is not based on any asserted <equivalency' between the liver
disorders discussed herein, but instead on certain significant known similarities between
these disorders and NASH which would have provided ample motivation or suggestion to
one of ordinary skill in the art to arrive at the claimed invention.” Answer, page 10.
A conclusion of prima facie obviousness, of course, does not end a patentability
determination under 35 U.S.C. § 103. As stated in In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986):
If a prima facie case is made in the first instance, and if the applicant comes
forward with reasonable rebuttal, whether buttressed by experiment, prior art
references, or argument, the entire merits of the matter are to be reweighed.
In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We find that the examiner errs in only taking into account the similarities of the
reference and claimed liver conditions, and in failing to reevaluate the evidence and to
account for the differences between the liver conditions described by Podda and
Shironaga and the NASH condition. In particular, the examiner has failed to rebut
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