Appeal No. 2005-0978
Application No. 09/983,232
35 U.S.C. § 103
Claims 54-56 stand rejected under 35 U.S.C. §103(a), as unpatentable over
Petterson.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). It is well-established that the
conclusion that the claimed subject matter is prima facie obvious must be supported by
evidence, as shown by some objective teaching in the prior art or by knowledge
generally available to one of ordinary skill in the art that would have led that individual to
combine the relevant teachings of the references to arrive at the claimed invention. See
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
According to the examiner (Answer, page 4):
Pettersen et al. teach a method of inhibiting the growth of a cancer cell
(e.g. lung carcinoma) in which the method comprises contacting the
cancer cell with a pharmaceutical composition comprised of compounds
defined by formula l (see Col. 2, lines 40-67; Col. 3 thru Col. 4, lines 1-29;
Col. 16 and 17). The difference between the presently claimed invention
and what is taught by the Petterson et al. reference is that the Pettersen et
al. reference does not specifically recite compounds according to Formula
II A of the present claims. However, Pettersen et al. do generally teach a
group of compounds, represented by their formula I, in which some of the
presently claimed species are encompassed.
The examiner concludes “[i]t would have been prima facie obvious to one having
ordinary skill in the art, in view of the Pettersen et al. reference, to arrive at the presently
claimed invention because Pettersen et al. teach a similar method of inhibiting the
growth of a cancer cell with a group of compounds is [sic, in] which some of the possible
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007