Appeal No. 1999-1281
Application No. 08/712,249
of two salts known to be useful independently as anticoagulants.” The examiner
then invokes (Answer, page 9) the principles of In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433 (CCPA 1977), arguing that “[a]ppellants have not met the
burden of establishing … that there is an unobvious distinction between the
characteristics of the claimed compositions and those suggested by the prior art.”
However, as explained by appellants (Reply Brief, page 5):
Appellants’ claimed heparins are not a mixture of heparins,
rather the heparin is a heavy metal salt-heparin salt. Given that
[a]ppellants multi-ion heparins are neither disclosed nor suggested
by the art, and thus no prima facie case of obviousness has been
established, there is no shift in burden to provide evidence of
“unexpected/superior results”.
As set forth in Best “[w]here … the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
process, the PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.” On
this record, as explained by appellants, and unlike the facts in Best, the claimed
anticoagulant composition is neither identical nor substantially identical to the
anticoagulant composition taught by the examiner’s combination of references. In
contrast to the mixture of heparins taught by the examiner’s combination of
references, the claimed anticoagulant composition is based on a heparin molecule
“‘blocked’ with both a heavy metal and e.g. a lithium salt” [see, Reply Brief, page 3].
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