Docket No. 2011-1294
PROST, SCHALL, and REYNA
April 19, 2012
Brief Summary: Appellant’s claims relating to “super-sulfated, oxidized heparin fractions” were determined to be inherently anticipated by an earlier patent. After rejection, the burden to show the fractions were not the same shifted to the applicant, who only offered “unsupported statements” and no evidence of a difference (In re Best (CCPA 1977); In re Hoke (CCPA 1977)).
Summary: This is an appeal from the BPAI determination that the claims of Mousa’s ‘216 application relating to “super-sulfated, oxidized heparin fractions” (“‘216 heparin fraction”) was invalid for anticipation and obviousness. The opinion points out that “super-sulfated” was not defined by the specification but discloses that “the ’216 heparin fraction has a high ratio of sulfate (-SO3-) groups to carboxylate (-COO-) groups, which can range from 2:1 to 5:1”, “fully inhibits FGF2- induced angiogenesis”, and can eliminate bleeding complications normally associated with heparin use due to weaker anticoagulant properties. Mousa’s claims were rejected for anticipation and obviousness in view of US 4,727,063 (“Naggi”) (and other obviousness references) which “discloses a super-sulfated heparin fraction with weak anticoagulant properties” (“Naggi heparin fractions”). During prosecution, the ‘216 claims were amended to include the limitation that the ‘216 heparin fraction “fully inhibits fibroblast growth factor (FGF2) induced angiogenesis”. Mousa argued that the claims did not encompass all super-sulfated, oxidized fractions but only those fractions with the FGF2-related property, which he argued the Naggi fraction lacked. Mousa appealed the rejections and the BPAI affirmed, concluding that the “Naggi heparin fraction inherently possesses the anti-angiogenesis characteristic required by claim 1 of the ’216 application” (anticipation). The PTO argued that “once the Examiner demonstrated that the structures of the two heparin fractions were identical, the burden of proof shifted to Mousa to show that the Naggi heparin fractions did not possess the same FGF2-inhibiting characteristics as the ’216 heparin fractions”, and the FC agreed (e.g., “no limitation on which oxidizing agents may be used”; “fairness of this shifting ‘is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products'” (In re Best, CCPA 1977); ““Appellant’s unsupported statements . . . are not sufficient evidence to rebut the examiner’s contention.” (In re Hoke, CCPA 1977)). As Mousa did not meet this burden, the BPAI anticipation decision was affirmed. Mousa also argued that the BPAI and the Examiner failed to invoke the cited art other than the Naggi patent in the obviousness rejections but the panel did not separately analyze this issue because of the anticipation determination.