Appeal No. 1997-2512
Application No. 08/118,905
penetrating the tube at its upper section to release the material to the mucosal membrane
of the animal,” as recited in appealed claim 12. Accordingly, we are constrained to
reverse the examiner’s rejection of claims 12 and 13 under 35 U.S.C.
§ 102(b).
Rejection under 35 U.S.C. § 103
We next consider the rejection of claims 14 and 15 under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Frenkel and Whittaker, or over the combined
teachings of Frenkel and Cassou.
According to the examiner, “[i]t would have been obvious to a person of ordinary
skill in the art at the time the invention was made to employ either [sic] the tube of
Whittaker et al [or Cassou] to dispense the vaccine of Frenkel et al. because the art
teaches that tube shaped devices are useful for buccal delivery of medicaments.” See
page 3 of the Answer. We disagree.
The initial burden of establishing a prima facie case to deny patentability to a
claimed invention rests upon the examiner. In re Piasecki, 745 F.2d 1468, 223 USPQ
785 (Fed. Cir. 1984). In carrying out this burden, the examiner must consider each and
every limitation. In re Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ 789, 791 (CCPA
1974).
Frenkel discloses the oral administration of Toxoplasma gondii (T. gondii) to cats.
In particular, Frenkel states:
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007