Appeal No. 2006-1245 Page 17
Application No. 10/294,106
212-13, 169 USPQ 226, 229 (CCPA 1971); accord, In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1658 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the applicant
has the burden of showing that they are not.”). Thus, “[i]n response to the PTO's
asserted prima facie case the applicant may argue that the inference of lack of novelty
was not properly drawn, for example if the PTO did not correctly apply or understand
the subject matter of the reference, or if the PTO drew unwarranted conclusions
therefrom.” Spada, 911 F.2d at 708, 15 USPQ2d at 1658.
On the current record, Appellants’ sole argument against the Thakur reference as
applied by the examiner is simply that the reference does not disclose the claimed
process. Thus, Appellants do not provide any specific argument or evidence rebutting
the fact-based conclusion discussed supra, that the therapeutic methods disclosed by
Thakur meet the limitations of claims 1, 3, 5 and 15. We therefore reject claims 1, 3, 5
and 15 as anticipated by Thakur, for the reasons set forth supra.
2. Anticipation of claim 16
Under the provisions of 37 CFR § 41.50(b), we enter the following new ground of
rejection: claim 16 is rejected under 35 U.S.C. § 102(b) as being anticipated by
Patwardhan.
Claim 16 recites a process of selectively inhibiting COX-2, relative to COX-1, by
administering least one “isolated” withanolide, in an amount effective produce the COX-
2 inhibition.
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