Appeal No. 2002-1121 Page 4
Application No. 09/171,169
Appellants argue that the claimed method of stimulating tear secretion and
mucin production in the eye is not rendered obvious by a method of treating
sinusitis. Appellants contend that sinusitis is an inflammation of the paranasal
sinuses. The paranasal sinuses, however, appellants assert, are not part of the
eye. In fact, according to appellants, the physiology of the sinuses and the eye
are very different, thus the ordinary artisan would not expect that a method of
treating sinusitis would also have efficacy in treating dry eye disease, i.e., by
stimulating tear secretion and mucin production in the eye. See Appeal Brief,
pages 6-8. We agree.
The burden is on the examiner to make a prima facie case of
obviousness, and the examiner may meet this burden by demonstrating that the
prior art would lead the ordinary artisan to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598-99 (Fed. Cir. 1988). The findings of fact underlying
the obviousness rejection, as well as the conclusions of law, must be made in
accordance with the Administrative Procedure Act, 5 U.S.C. 706 (A), (E) (1994).
See Zurko v. Dickinson, 527 U.S. 150, 158, 119 S.Ct. 1816, 1821, 50 USPQ2d
1930, 1934 (1999). Findings of fact underlying the obviousness rejection, upon
review by the Court of Appeals for the Federal Circuit, must be supported by
substantial evidence within the record. See In re Gartside, 203 F.3d 1305, 1315,
53 USPQ2d 1769, 1775 (Fed. Cir. 2000). In addition, in order for meaningful
appellate review to occur, the examiner must present a full and reasoned
explanation of the rejection. See, e.g., In re Lee, 277 F.3d 1338, 1342, 61
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