Appeal No. 2003-1765 Page 5
Application No. 09/319,735
(CCPA 1977), the examiner maintains that “the burden is upon the applicant to prove
that the claimed products are functionally different than those taught by the prior art and
to establish patentable differences” (Answer, page 5).
As set forth in In re Best, 562 F.2d at 1255, 195 USPQ at 433-44:
Where . . . the claimed and prior art products are identical or substantially
identical, or are produced by identical or substantially identical processes,
the PTO can require an applicant to prove that the prior art products do
not necessarily or inherently possess the characteristics of his claimed
product . . . . Whether the rejection is based on ‘inherency’ under 35
U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly
or alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products [footnote omitted].
Nevertheless, the examiner’s rejection would shift the burden of proof to
appellant merely on the basis of a general statement that it is possible to administer
antiinflammatory/analgesics “topically when treating inflammatory conditions of the skin
. . . by way of creams, jellies, gels, pastes, ointments and the like, in accordance with
standard pharmaceutical practice” (MacLean, page 4). The examiner has made no
attempt to establish what “standard pharmaceutical practice” entails with respect to
topical application of analgesics. On this record, it is unreasonable to shift the burden
to appellant to establish that MacLean administers a topically effective, but systemically
ineffective, amount of opioid analgesic. Accordingly, the examiner’s rejection of claims
1-3, 5-9 and 11-22 over MacLean is reversed.
OTHER ISSUE
We note that appellants have disclaimed the terminal portion of the statutory
term of any patent granted on the present application which would extend beyond the
term of U.S. Patent No. 5,589,480 (see paper no. 16 of the present application).
However, claim 15 of the present application appears to be identical in scope with claim
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