Appeal No. 2002-0455 5
Application No. 09/123,620
inherent in a compound with free radical scavenging and/or ribonucleotide
reductase inhibiting activity. Appellant has argued that “oxidation-reduction
reactions and free-radical chain reactions involve comple[te]ly disparate
chemistry and are never suggestive of one another.” Appeal Brief, page 2.
In response, the examiner has presented reasoning to support her
position. See the Examiner’s Answer, page 5. However, the examiner has
presented no evidence to show that those of skill in the art would have
recognized van’t Riet’s compounds, which were disclosed as free radical
scavengers and ribonucleotide reductase inhibitors, as antioxidants that would be
suitable for and likely to be effective as inhibitors of NF-κB.
While Appellant has not cited any evidence to support his reading of the
prior art, neither has the examiner. A lack of evidence on either side, however,
favors the applicant, since the examiner bears the burden of proving
unpatentability. As Judge Posner recently put it in a similar context, “in a finger-
pointing contest [the patentee] must lose because it bears the burden of proving
infringement.” SmithKline Beecham Corp. v. Apotex Corp., No. 98 C 3952, 2003
U.S. Dist. LEXIS at *73 (N.D. Ill. 2003).
In addition, while the specification does state that “[a]ntioxidants have
been shown to inhibit the oxidative stress activation of NF-κB,” page 2, it does
not state that all antioxidants would be expected to be NF-κB inhibitors. Nor has
the examiner provided any evidence independently to show that any compound
that could be construed as an antioxidant would be expected to be an inhibitor of
NF-κB. Thus, even assuming arguendo that those skilled in the art would have
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