Appeal No. 2006-0819 Page 4
Application No. 09/929,862
[T]he difference between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains
because Roth teaches the presently claimed salt forms and
hydroxyl acid forms of atorvastatin . . . as being effective [sic] HMG-
CoA reductase inhibitors and the skilled artisan would have been
motivated to alternatively use these compounds of Roth for the
purpose taught by Dennino [ ] for atorvastatin because not only was
it known that atorvastatin (see Dennino [ ] as referenced above)
and the presently claimed salt forms and hydroxy acid forms of
atorvastatin were known to function as HMG-CoA-reductase
inhibitors (see Roth as referenced above), but Dennino [ ] teach
that HMG-CoA reductase inhibitors in general could be combined
with [2R, 4S] 4-[(3,5-bis-trifluoromethyl-benzyl)-methoxycarbonyl-
amino]-2-ethyl-6-trifluoromethyl-3,4-dihydro-2H-quinoline-1-
carboxylic acid ethyl ester for the purposes taught therein and
presently claimed.
Id. at 3
“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). We
conclude that the examiner has met the burden of establishing a prima facie case
of obviousness, and the rejection is affirmed.
Appellant argues that the examiner has failed to make out a prima facie
case of obviousness. See Appeal Brief, page 6. Appellant asserts, relying on In
re Geiger, 815 F.2d 686, 688 2 USPQ2d 1276, 1278 (Fed. Cir. 1987), “[w]hile
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