Appeal No. 2007-1138
Application No. 10/304,918
applicant to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.” In re Swinehart, 439 F.2d 210,
212-13, 169 USPQ 226, 229 (CCPA 1971); In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433-34 (CCPA 1977). In view of Perricone’s teaching of
carriers for topical compositions that also appear suitable for oral
administration, we find there is sufficient evidence to reasonably presume
that the suggested topical composition is “orally administrable,” shifting the
burden to Appellants to show otherwise.
Appellants argue that the prior art relied upon by the Examiner
teaches topical compositions which would be “incompatible with an orally
administrable form.” (Br. 3.) We agree to the extent that when impregnated
in a wound dressing, the composition would hardly be suitable for
administration by mouth. However, Perricone teaches topical formulations,
e.g., using water, which are in a physical form compatible with oral
administration. Appellants assert that “the disclosed topical vehicles” in the
cited prior are not compatible with oral use, but provide no evidence to
substantiate this position.
Accordingly, we affirm the rejection. Because our reasoning differs
from the Examiner’s, we designate this as a new ground of rejection under
37 C.F.R. § 41.50(b) to provide Appellants with the opportunity to respond
to it.
OTHER ISSUES
Should prosecution resume in this application, the Examiner should
consider the relevance of the following prior art:
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