Appeal No. 2005-0192 Page 8
Application No. 09/809,021
apparently need not even contain human thrombin in order to be “suitable for
therapeutic purposes.”
We conclude that the compositions disclosed by Lorne and Allary reasonably
appear to meet all of the limitations of instant claim 18. The burden therefore shifts to
Appellants to provide evidence to the contrary. See In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433 (CCPA 1977) (“[W]here the Patent Office has reason to believe
that a functional limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior art, it possesses
the authority to require the applicant to prove that the subject matter shown to be in the
prior art does not possess the characteristic relied on.”).
Appellants have provided no evidence to show that the thrombin- and
benzamidine-containing eluate disclosed by the prior art is not “suitable for therapeutic
purposes.” Since the prior art composition reasonably appears to meet all the
limitations of instant claim 18, and Appellants have provided no evidence that it does
not, we affirm the rejection of claim 18 as anticipated by either Allary or Lorne. Claims
35 and 37 fall with claim 18.
2. Obviousness
The examiner rejected claims 18, 19, and 35-38 as obvious over either Allary or
Lorne, combined with Hanada, Brezniak, and Altshuler. As noted above, all of the
claims stand or fall together. Therefore, we need only consider claim 18; claims 19 and
35-38 stand or fall with claim 18.
We have already concluded the claim 18 is anticipated by either of Allary or
Lorne. Therefore, claim 18 is also obvious in view of either Allary or Lorne, standing
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