Appeal No. 2002-1575 Page 5
Application No. 08/945,901
examiner’s burden, under these circumstances, to demonstrate that the
disclosure in Mita is sufficient to show that the natural result flowing from the
operation as taught would result in the performance of the questioned function.
Continental Can Co. In our opinion, based on the evidence of record, the
examiner failed to meet his burden of demonstrating that the natural result of
Mita’s method would result in appellants’ claimed method of increasing wound
closure strength after corneal incision.
Adding additional weight to appellants’ argument is their recognition that
of the twelve types of ophthalmological surgery can be contemplated by Mita’s
use of the term “ophthalmological surgery, only two, cataract surgery and corneal
transplantation involve corneal or sclerocorneal incision as required by
appellants’ claimed invention.
For the foregoing reasons, it is our opinion that Mita does not anticipate
the claimed invention.
THE REJECTION UNDER 35 U.S.C. § 103:
As discussed supra, appellants have presented evidence demonstrating
that a compound, such as Mita’s (see column 1, lines 28-30, “the inventors found
that these compounds have stimulative effects on the proliferation of corneal
keratocytes”) which exhibits a corneal wound healing effect by stimulating
proliferation of corneal keratocytes does not always exhibit a strength of a wound
closure site after healing. We remind the examiner that “[w]hen prima facie
obviousness is established and evidence is submitted in rebuttal, the decision-
maker must start over.” In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
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