Appeal 2007-1033
Application 10/091,061
“‘useful in the treatment of a variety of cancers,’ including carcinoma of the
breast, colon, lung, ovary, and pancreas.” (Supra p. 7.) While the prior art
may contain evidence that capecitabine and Compound 1 are used in various
cancers and thus provide evidence that the combination would also be useful
in the same various cancers, I am not aware of any suggestion the
combination would provide unexpected results, or be “synergistic,” in any of
these six types of cancer.
The burden is on Appellant to overcome the prima facie case with
objective evidence commensurate in scope with the claims. See, e.g., In re
Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (“It is well
established that the objective evidence of nonobviousness must be
commensurate in scope with the claims”). Once a prima facie case has been
made, the burden shifts to the Appellant to overcome it with evidence
commensurate in scope with the claims. Contrary to the majority’s view
(supra p. 7), at that point it is not the Examiner’s burden to show why the
evidence would not be commensurate in scope with the claims. In this case,
the “claims . . . are much broader in scope” than Appellant’s showing, and I
find “‘no adequate basis for reasonably concluding’” the recited broad
dosages “would behave in the same manner” as the tested dosages in all the
recited cancers. In re Lindner, 457 F.2d at 508, 173 USPQ at 358.
In reaching its conclusion that Appellant has overcome the
Examiner’s prima facie case, the majority relies on Appellant’s statement
that the experiments described in his Declaration “demonstrated a
synergistic effect” that he found “surprising.” (Supra p. 6 (quoting
Declaration ¶ 15 and citing In re Soni, 54 F.3d 746, 751, 34 USPQ2d 1684,
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