Appeal No. 2003-0564 Page 4
Application No. 08/964,498
the teaching of [Holmes-Farley] that quaternary polyallylamines are
effective for so treating.
Paper No. 19, mailed Nov. 7, 2000, page 2.
Appellants argue that the cited references do not support a prima facie
case of obviousness. See the Revised Brief on Appeal, page 5: Howes
“discloses antimicrobial polymers with diallyl repeat units but does not suggest
using the polymers for treating hyperphosphatemia,” while Holmes-Farley does
not suggest using polymers of cyclic diallyl monomers, such as those of Howes,
for treating hyperphosphatemia. Appellants conclude that, at best, “the
Examiner has shown that the disease state is known to be treated by a different
product and that a polymer falling within the scope of some of the claims is
known to treat a different disease.” Id., page 7.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993). An adequate prima facie case requires, among other things,
evidence showing that those of ordinary skill in the art would have been led to
combine the elements known in the prior art in such a way as to yield the claimed
invention. See In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316
(Fed. Cir. 2000) (“[T]o establish obviousness based on a combination of the
elements disclosed in the prior art, there must be some motivation, suggestion or
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