Appeal No. 2003-1736
Application No. 09/123,137
prior art and optionally in further combination with WO 93/17669 and Sawhney 2.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). It is well-established that the
conclusion that the claimed subject matter is prima facie obvious must be supported by
evidence, as shown by some objective teaching in the prior art or by knowledge
generally available to one of ordinary skill in the art that would have led that individual to
combine the relevant teachings of the references to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
It is the examiner's position that Sawhney 1 teaches that bioerodible hydrogels
could be photopolymerized in vivo for the prevention of tissue adhesions but does not
teach the addition of the inhibitors of reactive oxygen species. Answer, page 6.
Hettinger is relied on by the examiner for its teaching that the polymerization of
acrylamides at a tumor site reduces the influx of oxygen to the site, but does not teach
the addition of inhibitors of reactive oxygen species to the acryamide. Id.
To make up for these deficiencies in the prior art, the examiner finds “Applicants
disclose in the specification of the art well-known effectiveness of the claimed
compounds against tissue adhesions (see pages 3-5).” Answer, page 6. Sawhney 2 is
relied on for the disclosure of the use of hydrogels for adhesion prevention. Answer,
page 7.
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