Appeal No. 1999-1703
Application No. 08/313,194
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is established
when the teachings from the prior art itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the art. In re Bell, 991 F.2d 781, 783, 26
USPQ2d 1529, 1531 (Fed. Cir. 1993). An obviousness analysis requires that the prior art
both suggest the claimed subject matter and reveal a reasonable expectation of success
to one reasonably skilled in the art. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991).
In the present case, the examiner relies on applicants' admissions in the
specification at pages 1-3 that “the claimed active agents are known angiotensin II
antagonists.” Answer, page 3. At the time appellants' invention was made, however,
angiotensin II antagonists were known for the treatment of hypertension and congestive
heart failure (specification, page 3) but not for treating or preventing the development of
disease conditions associated with impaired neuronal conduction velocity. According to
the examiner, “Bagley et al Would [sic] motivate the skilled artisan to use angiotensin II
antagonists (claims 1-3) and tetrazoles (claims 4-5) to treat impaired neuronal conduction
since they teach at column 57, lines 19-37 that compounds similar to applicants are used
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