Appeal No. 2001-1294 Page 8
Application No. 08/473,667
Southern California Edison, 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075-76
(Fed. Cir. 2000).
On this record, the examiner has not provided the evidence necessary to
meet her burden of establishing a prima facie case of obviousness. Instead, the
examiner appears to have misapprehended the facts in evidence. Contrary to
the examiner finding, Meyer does not teach that anabaseine and nicotine are
functionally equivalent in brain. See supra. Furthermore, to the extent that
Swanson is relied on to teach that a neuromuscular toxin can be useful in
treating CNS nicotinic receptor pathology, the examiner has not demonstrated
that anabaseine or DMAB-anabaseine would be reasonably expected to function
in a similar manner to Swanson’s structurally different toxins. We remind the
examiner that in order to establish a prima facie case of obviousness, there must
be both some suggestion or motivation to modify the references or combine
reference teachings and a reasonable expectation of success. In re Vaeck, 947
F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). On this record, the
examiner has identified neither a suggestion to modify the references, nor a
reasonable expectation of success in arriving at appellants’ claimed invention.
In our opinion, the teaching in Leeson that nicotine can be used for
treating memory dysfunction (Answer, page 8) and the teachings in Rawlins and
Remington of pharmaceutically acceptable formulations do not make up for the
deficiencies in the combination of Tu, Swanson and Meyer.
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