Appeal No. 2003-1042 Page 5
Application No. 09/019,764
ordinary skill in the art at the time the invention was made would
have been motivated to do so because Cleland [ ], Belanger [ ], and
Fox [ ] teach that they are effective preservatives for extending the
shelf life of medical formulations.
Id.
“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) (citations omitted).
In the instant appeal, appellants argue that the Declaration of John P.
Hennessey, filed with the amendment of September 22, 1999 (Hennessey
Declaration), establishes unexpected superior results. See Appeal Brief, page 7.
In response, the examiner noted that he agreed “that the specific concentrations
of preservatives and combinations of preservatives cited in the Hennessey
Declaration support an unexpected result over the closely related preservatives
of the prior art.” Id. (quoting the Office Action dated December 23, 1999, Paper
No. 9, page 4). The examiner went on to note that the ordinary artisan “could
reasonably interpret ‘approximately 1.5% benzyl alcohol’ as encompassing
‘about 0.7 to 1% (as is taught by Cleland et al.; see column 9, lines 45-46), or as
comprising 0.9% (as taught by Belanger et al.; see column 27, lines 40-45).” Id.
The examiner also reiterates that argument on appeal. See Examiner’s Answer,
pages 5-6.
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