Appeal No. 2001-1933
Application No. 08/940,058
suffice as appropriate grounds to remand the application to the examiner for further
consideration, we conclude that the rejections before us are without merit rather than
remand the application for further consideration by the examiner.
I. 35 U.S.C. § 103(a)
Claims 1-3, 15-17 and 25-27 stand rejected under 35 U.S.C. § 103(a) as obvious
over Leonard in view of Borodkin, Lieberman, Kai or Matsuda.
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).
The examiner relies on Leonard for the disclosure of a ?paroxetine hydrochloride
salt and carboxylic composition (see Borodkin Amberlite IRP-88 being poly-carboxylic
acid). Answer, page 4. According to the examiner, the ?difference between the claims
and Leonard et al. <436 is that Leonard et al. <436 used paroxetine hydrochloride in its
hemihydrate crystal while the instant claims employed an amorphous form.” Id.
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