Appeal No. 2005-0403 Page 4
Application No. 09/748,466
confers an additional benefit not disclosed by Hinson, cannot render the claimed
process patentable.
After the PTO establishes a prima facie case of anticipation, the burden
shifts to the appellants to prove that the subject matter shown to be in the prior
art does not possess the characteristics of the claimed invention. See In re
Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985); In re King, 801
F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986). Thus, appellants’ burden
before the PTO is to prove that the subject matter of the method shown to be in
the prior art does not possess the characteristics of the claimed method.
In this regard, we recognize appellants’ assertion (Brief, page 6),
Hinson does not provide any motivation for treating
physiological changes in skin such as those recited in the
pending claims. Rather, Hinson only teaches treating
pathological changes in the skin, such as the formation of
skin lesions and skin ulcers, with a mixture of insulin and
glucose. Hinson also does not provide a reasonable
expectation that the compositions of the presently claimed
invention would be able to treat physiological changes in skin
such as those recited in the pending claims.
According to appellants (Reply Brief, page 4), “Hinson does not inherently or
expressly disclose treating ‘skin’ with an effective amount of a composition
consisting essentially of insulin….” Notwithstanding appellants’ assertion to the
contrary, Hinson teach the application of an effective amount of an insulin
composition to the legs and feet of a patient suffering with severe varicose veins
and phlebitis. See Hinson, column 3, example 3. In our opinion, this is an
express disclosure of the treatment of skin with an effective amount of a
composition consisting essentially of insulin. Appellants have not demonstrated
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