Appeal No. 2004-0903 Page 3
Application No. 09/008,957
The Examiner’s Answer continues:
The instant claim differs from the references by reciting a
specific species not exemplified by the cited prior art. However, the
cited prior art teach equivalence between hydrogen, methyl and or
ethyl at C-24. Therefore, it would have been obvious to one having
ordinary skill in the art at the time of the present invention to select
any of the species of the genus taught by the prior art, including 1α-
hydroxyl-vitamin D5 of the instant claim, because the ordinary
artisan would have the reasonable expectation that any of the
species of the prior art genus would have similar properties and,
thus, the same uses as the prior art genus as a whole. The
ordinary artisan would have been motivated to make additional
compounds as taught by the cited prior art for use as taught by the
prior art.
Id. at 5-6 (citations omitted).
“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). “If a prima facie case is made in the first instance, and
if the appellant comes forward with reasonable rebuttal, whether buttressed by
experiment, prior art references, or argument, the entire merits of the matter are
to be reweighed.” In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed.
Cir. 1986) (citing In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.
Cir. 1984)).
Appellants do not argue the prima facie case. See Appeal Brief, page 5.
Rather, appellants argue that they “have rebutted the . . . prima facie case by
2 In the future, however, we suggest that upon remand of an application for
further consideration and/or analysis of specified evidence, that the examiner
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