Ex Parte Adekenov

Board of Patent Appeals and Interferences

Aug 7, 2003

08934471 (B.P.A.I. Aug. 7, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

Paper No. 27

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SERGAZY M. ADEKENOV, and KANAT A. AITUGANOV
__________

Appeal No. 2002-0518
Application No. 08/934,471
__________

ON BRIEF
__________

Before WINTERS, ADAMS, and GRIMES, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 1, and 5-8 which are all the claims pending in
the application.
Claims 1 and 8 are illustrative of the subject matter on appeal and are
reproduced below:
1. A pharmaceutical composition in unit dosage form suitable for the
treatment of a human cancer, consisting essentially of about 40 mg to
about 480 mg of dimethylaminoarglabin or a pharmaceutically
acceptable salt thereof.

8. An article of manufacture comprising packaging material and a
pharmaceutical agent contained within said packaging material,
wherein said pharmaceutical agent is therapeutically effective for
suppressing tumor growth in a human, and wherein said packaging
material comprises a label that indicates that said pharmaceutical
agent can be used for suppressing tumor growth in a human, and
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Application No. 08/934,471

wherein said pharmaceutical agent comprises dimethylaminoarglabin
or a pharmaceutically acceptable salt thereof.

The reference relied upon by the examiner is:
USSR State Registry of Inventions Certificate:
Adekenov et al. (Adekenov) 1746674 Mar. 8, 1992
GROUND OF REJECTION
Claims 1 and 5-8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Adekenov.
We reverse.
DISCUSSION
According to the examiner (Answer, page 3), Adekenov “teaches
applicant’s compound, dimethyl amino arglabin [sic], for treating tumors and a
pharmaceutical composition containing said compound.” We agree that
Adekenov teaches the compound, dimethylaminoarglabin, set forth in appellants’
claimed invention. Appellants’ claims 1 and 5-7, however, require that the
claimed pharmaceutical composition consist essentially of a specific amount
(dose) of dimethylaminoarglabin. To reach this dosage limitation, the examiner
finds (Answer, page 4), “[t]he amounts employed in … [Adekenov] are higher
than those being employed by [a]ppelants (note the 30-50 mg/kg is the max
tolerable dose in the certificate).” The examiner, however, makes no attempt to
explain how this 30-50 mg/kg amount correlates to the amounts set forth in
claims 1 and 5-7. See e.g., claim 1, which requires 40 mg to about 480 mg of
dimethylaminoarglabin. Accordingly, it is our opinion that the examiner failed to
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Application No. 08/934,471

meet his burden of providing the evidence necessary to establish a prima facie
case of obviousness.
Similarly, with regard to the article of manufacture set forth in appellants’
claim 8, the examiner simply concludes (Answer, page 4), “[t]he article of
manufacture, claim 8, is nothing more than a pharmaceutical composition with
packaging materials.” While this is may be true, the examiner’s burden of
providing an evidentiary basis for his rejection is not relieved. On this record, the
examiner makes no attempt to provide the evidence necessary to establish a
prima facie case of obviousness.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “A prima facie case of
obviousness is established when the teachings from the prior art itself would
appear to have suggested the claimed subject matter to a person of ordinary skill
in the art.” In re Bell, 991 F.2d 781, 782, 26 USPQ2d 1529, 1531 (Fed. Cir.
1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976)). If the examiner fails to establish a prima facie case, the
rejection is improper and will be overturned. In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
The examiner’s unsupported assertion is not sufficient to support a prima
facie case of obviousness. See In re Lee, 277 F.3d 1338, 1343-1344,
61 USPQ2d 1430, 1433-1434 (Fed. Cir. 2002). See also W.L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1552, 220 USPQ 303, 312-313 (Fed. Cir.
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Application No. 08/934,471

1983): “To imbue one of ordinary skill in the art with knowledge of the
invention.., when no prior art reference or references of record convey or
suggest that knowledge, is to fall victim to the insidious effect of a hindsight
syndrome wherein that which only the inventor taught is used against its
teacher.”
Since the examiner failed to provide the requisite evidentiary basis to
support his rejection we are constrained to reverse the rejection of claims 1 and
5-8 under 35 U.S.C. § 103 as being unpatentable over Adekenov.
REVERSED

Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Donald E. Adams )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Lora M. Green )
Administrative Patent Judge )

DA/dym

W. JACKSON MATNEY, JR.
MILBANK, TWEED, HADLEY & MCCLOY
INTERNATIONAL SQUARE BUILDING
1825 I STREET, N.W.
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Application No. 08/934,471

WASHINGTON DC 20006