Appeal No. 2001-1043 Page 4
Application No. 08/734,738
5-6 (emphasis in original).
The burden is on the examiner to set forth a prima facie case of
obviousness. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1581
(Fed. Cir. 1996). In assessing the prior art, each prior art reference must be
considered in its entirety in an obviousness determination. In re Wesslau,
353 F.2d 238, 241, 147 USPQ 391, 393 (CCPA 1965). As stated in Panduit
Corp., F.2d at 1093, 227 USPQ at 344 “[t]he well established rule of law is that
each prior art reference must be evaluated as an entirety, and that all of the prior
art must be evaluated as a whole.” See W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 727 F.2d 1540, 1550, 220 USPQ 303, 311 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984); In re Kuderna, 426 F.2d 385, 390, 165 USPQ 575, 578-79
(CCPA 1970). In assessing the teachings of the prior art reference as a whole,
the examiner must also consider those disclosures that may teach away from the
invention. See In re Fine, 837 F.3d 1071, 1074, 5 USPQ2d 1596, 1598 (1988).
Thor, when considered in its entirety, teaches the use of competitive
NMDA antagonists in the treatment of urinary incontinence. There is only a
single disclosure of the use of a non-competitive NMDA antagonist in the
Background of the Invention section of the patent, which states:
In humans, it has been shown that the highest density of NMDA
receptors in the spinal cord are located at the sacral level, including
those areas that putatively contain bladder parasympathetic
preganglionic neurons. Because NMDA receptors are excitatory in
nature, pharmacological blockade of these receptors would
suppress bladder activity. Recent studies have shown that MK-
801, a non-competitive NMDA antagonist, increases the volume
necessary to elicit micturation (urination) and decreases the
amplitude of the micturation contraction. However, these studies
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