Appeal 2007-0913 Application 09/888,126 composition, such as the insulin and the DPPC, and that such an interaction could not have been predicted. The Specification teaches “[f]ormulations having particles comprising, by weight, approximately 40% to 60% DPPC, approximately 30% to about 50% insulin and approximately 10% sodium citrate.” (Specification 3). The Specification does not disclose the criticality of formulations of approximately 60% DPPC, approximately 30% insulin and approximately 10% sodium citrate. PRINCIPLES OF LAW “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 burden of demonstrating unexpected results rests on the party asserting them, and “it is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). “Mere improvement in properties does not always suffice to show unexpected results.” In re Soni, 54 F.3d 746, 751, 34 USPQ2d 1684, 1688 (Fed. Cir. 1995). Moreover, it has been long held that “even though applicant’s modification results in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art, unless the claimed ranges ‘produce a new and unexpected result which is different in kind and not 8Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013