Appeal No. 2003-1716 Page 4
Application No. 09/946,205
Pharmaceutically acceptable solid or liquid carriers may be added to
enhance or stabilize the composition, or to facilitate preparation of the
composition. Liquid carriers include syrup, peanut oil, olive oil, glycerin,
saline, ethanol, and water. Solid carriers include starch, lactose, calcium
sulfate dihydrate, terra alba, magnesium stearate or stearic acid, talc,
pectin, acacia, agar or gelatin. The carrier may also include a sustained
release material such as glyceryl monostearate or glyceryl distearate,
alone or with a wax. The amount of solid carrier varies but, preferably, will
be between about 20 mg to about 1 g per dosage unit. The
pharmaceutical preparations are made following the conventional
techniques of pharmacy involving milling, mixing, granulating, and
compressing, when necessary, for tablet forms; or milling, mixing and
filling for hard gelatin capsule forms. [page 7, lines 18-29; emphasis
added]
On these facts, we agree with the examiner's finding that Lukas-Laskey
describes the invention recited in claim 1 on appeal, viz., a tablet comprising carvedilol
or a pharmaceutically acceptable salt thereof; hydochloro-thiazide or a pharmaceutically
acceptable salt thereof; and at least one pharmaceutically acceptable additive.
Accordingly, we agree that Lukas-Laskey establishes a prima facie case of anticipation
of claim 1, and that the burden of persuasion shifted to applicant to rebut the prima
facie case.1
Applicant's sole argument on appeal is that Lukas-Laskey constitutes a non-
enabling reference. As stated in In re Donohue, 766 F.2d 531, 533, 226 USPQ 619,
621 (Fed. Cir. 1985):
It is well settled that prior art under 35 U.S.C. § 102 (b) must sufficiently
describe the claimed invention to have placed the public in possession of
it. Accordingly, even if the claimed invention is disclosed in a printed
publication, that disclosure will not suffice as prior art if it was not
enabling. It is not, however, necessary that an invention disclosed in a
1 For a discussion of "prima facie case of anticipation" and the introduction of
evidence sufficient to rebut a prima facie case, see In re King, 801 F.2d 1324, 1327,
231 USPQ 136, 138 (Fed. Cir. 1986).
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