Appeal No. 2001-1245
Application 08/430,661
Be that as it may, our review of the examiner's position leads us to conclude that
the examiner has not established a prima facie case of obviousness. Turning first to the
rejection as it stands premised upon Fukushima by itself, as noted, the examiner has
made no findings in regard to the requirement of claim 77 that the complex contain a
polyene antifungal agent. We do note that the examiner, in responding to appellant's
arguments on appeal, states at page 5 of the Examiner's Answer that "Fukushima is
directed to water insoluble drugs in general… and it is within the skill of the art to make
use of the method to any drug." We remind the examiner that conclusions of
obviousness must be based upon facts, not generalities. In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968); In re
Freed, 425 F.2d 785, 788, 165 USPQ 570, 571 (CCPA 1970). The examiner has not
provided an analysis of the relevant disclosure of Fukushima as to the class of drugs
useful in that invention and correlated that description to the properties of the polyene
antifungal agent required by claim 77 on appeal. Without such a reasoned analysis, we
are not in a position to determine whether polyene antifungal agents as required by
claim 77 on appeal are indeed within the class of drugs envisioned by Fukushima.
Furthermore, even if such an a nalysis establishes that the polyene antifungal agents of
this invention are within the broad definitions of "drugs" included in Fukushima, that
does not necessarily mean it would have been obvious to one of ordinary skill in the art
to select that subgenus of agents from the broad genus of "drugs" described by
Fukushima. See In re Baird, 16 F.3d 380, 29 USPQ2d 1550 (Fed. Cir. 1994); In re
Jones, 958 F.2d 347, 21 USPQ2d 1941(Fed. Cir.1992).
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