Appeal No. 2001-1437
Application No. 08/764,145
antagonist and agonist. Stated differently, the examiner has failed to establish that the
recognized dose dependence of the effects of agonist and antagonist upon
desensitization alone described in Geoffroy, is a result effective variable which would
have directed one of ordinary skill in the art specifically to the claimed optimum amounts
of agonist and antagonist to prevent desensitization of the drug (agonist). Appellant
argues that selection of the claimed formulation is based, in part, on the parameter of
the dissociation constants of the agonist and antagonist of the receptor involved which
are not parameters recognized in Geoffroy to be result effective.1
In our view, the examiner has failed to provide an indication of specific evidence,
or appropriate argument under the principles of In re Best, in the first instance, to shift
the burden to appellant to establish that a prior art product does not necessarily
possess the characteristics of the claimed product when the prior art and claimed
products are identical or substantially identical. In re Best, 562 F.2d 1252, 1254, 195
USPQ 430, 432 (CCPA 1977).
Appellant has argued that the claimed maximum critical point is not disclosed or
described in Geoffroy and could not be derived from the reference. The examiner has
failed to rebut this argument.
In view of the above, the rejections of the claims over Geoffroy are reversed.
1 See also other relevant parameters, specification, pages 15-23.
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