Appeal No. 2003-0736 Page 4
Application No. 09/720,007
pain from a wide variety of sources and it was known that the
actives did not possess the side effects of morphine.
Id., pages 3-4.
Appellant argues that the examiner has not made out a prima facie case
of obviousness because, although the examiner’s references teach treating pain
associated with a variety of conditions, none of them teaches a treatment of renal
colic. See the Appeal Brief, pages 5-8. Appellant argues that, in contrast to the
conditions specifically named by Singh and Wetzel, “all of which are chronic in
nature, the pain associated with renal colic is acute and sudden.” Reply Brief,
pages 2-3. Appellant concludes that Wetzel and Singh
would do no more than render it obvious to a skilled artisan to try to
use a GABA analog for the treatment of renal colic, and that
nothing in these references . . . would lead such a skilled artisan to
have a reasonable expectation that the use of a GABA analog to
treat the acute and sudden pain associated with renal colic would
be successful.
Id. Finally, Appellant argues that Field does not remedy the deficiency of the
other references, because “Field et al. adds nothing to the teachings of Wetzel
et al. or Singh, but for the teaching that gabapentin is efficacious against
inflammatory pain without exhibiting the side effects of morphine.” Id., page 4.
“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). “The test for obviousness is what the combined teachings of the
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