Appeal No. 2004-1790 Page 7
Application No. 09/836,971
therapeutic activity. . . . The teachings of Crawson [ ] [sic] are also
directed to preventing the recurrence of colorectal cancer using
cytocidal and bowel preparing agents. Therefore, it would have
been obvious for a skilled artisan at the time of the instant invention
to use PEG of Crawson [sic] for treating as well as preventing colon
or colorectal cancer because PEG is shown to exhibit significant
activity (30% and 6%) in killing HT29 colorectal cells.
Examiner’s Answer, page 7.
“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). The test of obviousness is “whether the teachings of
the prior art, taken as a whole, would have made obvious the claimed invention.”
In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
Appellants argue that Crowson teaches away from the claimed invention
by teaching that water performed better in the in vitro experiments than did the
PEG, thus providing no motivation to administer PEG to a mammal. We agree.
As demonstrated by Table IV, PEG did not even perform as well as water, and
Crowson teaches that cetrimide would be the agent of choice. See Crowson,
Table IV and page 100. Thus, the reference provides no motivation to
administer PEG to mammal for the treatment or prevention of colon or rectal
cancer, and the rejection is reversed.
CONCLUSION
For the reasons set forth above, the rejection of claim 12 stand under 35
U.S.C. § 112, first paragraph, the rejection of claims 6, 8, 12 and 14 under 35
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007