Appeal No. 2005-1150
Application No. 09/953,450
discloses the treatment of the same patients with the same pharmaceutical preparation
recited in representative claim 1. Accordingly, we find no difference between the
method recited in claim 1 and the method taught by Delhaye.
We point out that under such circumstances when the prior art teaches a
compound or method which is similar to the claimed compound or method, it is
reasonable to shift the burden to the appellants to demonstrate a difference between
the prior art and that which is claimed. In re Best, 562 F.2d 1252, 1254-55, 195 USPQ
430, 433 (CCPA 1977). As stated in Best, 562 F.2d at 1254-55, 195 USPQ at 433,
quoting In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 229 (1971):
[I]t is elementary that the mere recitation of a newly discovered function or
property, inherently possessed by things in the prior art, does not cause a claim
drawn to those things to distinguish over the prior art. Additionally, where 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 [58 CCPA at 1031, 439 F.2d at 212-213, 169
USPQ at 229.] This burden was involved in In re Ludtke, 58 CCPA 1159, 441
F.2d 660, 169 USPQ 563 (1971), and is applicable to product and process claims
reasonably considered as possessing the allegedly inherent characteristics
[emphasis added].
Accordingly, absent evidence to the contrary, we find that the teachings of
Delhaye anticipate the subject matter of representative claim 1.
We note the appellants’ argument that Delhaye discloses “the use of a high
lipase pancreatic enzyme preparation to treat exocrine pancreatic insufficiency in
patients with chronic pancreatitis.” Brief, p. 9; Reply Brief, p. 4. The appellants contend
that Delhaye “contains no discussion of treating diabetes and likewise no evaluation of
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