Appeal No. 2004-0761 Page 3
Application No. 09/794,531
Loria “teaches that βAED can enhance immune response, and [is] also useful in
counteracting the untoward effects of irradiation and chemotherapy.” Id.
The examiner conceded that “Loria does not expressly teach the
compounds are administered in a subsequent manner,” id., but asserted that “the
optimization of therapeutic effect parameters (e.g., dosing regimens) is obvious
as being within the skill of the artisan.” Id., page 5. See also page 7:
“[A]djusting and optimizing the timing and administration order of the compounds
would be obvious as being within the purview of the skilled artisan.”
Appellant argues that the cited references would not have suggested the
claimed method of sequentially administering αAED and βAED. See the Appeal
Brief, pages 8-9: “[T]he activity of the combination of αAED alone or the activity
of αAED and βAED does not suggest using αAED and βAED sequentially. If
anything, it suggests that αAED and βAED should be used in combination and
not sequentially. Therefore, Loria does not suggest treating cancer using
sequential administration of αAED and βAED. . . . Berkow does not provide any
teaching or suggestion related to the administration of αAED and βAED.”
“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).
In considering whether a claimed invention would have been obvious at
the time it was made, examiners must be careful to avoid interpreting the
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007