Appeal 2007-1614
Application 09/779,447
patient. In fairness, the expectation of brain damage teaches away from the
administration of tunicamycin in vivo” (id.). Appellants also urge that
“[s]ince neither of the prior art references relied upon by the [E]xaminer
contemplated in vivo administration of tunicamycin to a patient, neither
reference even contemplates the further improvement of suspending then re-
admi[ni]stering the treatment” (id. at 7).
As stated in In re Oetiker, 977 F.2d 1443, 1445-1446, 24 USPQ2d
1443, 1444-1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
. . . .
[T]he conclusion of obviousness vel non is based on the
preponderance of evidence and argument in the record.
We agree with Appellants that the Examiner has not established a
prima facie case of obviousness.
The United States Supreme Court recently stated that the analysis
under 35 U.S.C. § 103 “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82
USPQ2d 1385, 1396 (2007). In emphasizing this flexible approach to the
obviousness analysis, however, the Court also reaffirmed the principle that
claims would likely be unobvious when “when the prior art teaches away”
from their practice. Id. at 1740, 82 USPQ2d at 1395. The Court noted that
it had previously held claims unobvious where the prior art warned of risks
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