Appeal No. 1999-2230
Application 08/465,236
Erbel discloses ultrasonic contrast agents composed of microparticles which
contain a gas and polyamino-dicarboxylic acid-co-imide derivatives; processes for their
preparation; and their use as diagnostic and therapeutic agents. Based on our review of
this reference, we find that Erbel’s microparticles have significantly smaller particle sizes
compared with the microcapsules recited in the appealed claims. See particularly, Erbel,
column 7, lines 15 through 30; and column 10, Table 1. Neither Erbel nor Sands discloses
or suggests the numerical limitations on size and size distribution recited in the appealed
claims.
In the Answer, paragraph bridging pages 4 and 5, the examiner considerably
overstates the significance of teachings found in Mathiowitz. The examiner’s position to
the contrary, notwithstanding, Mathiowitz does not disclose the preparation of protein
microspheres by spray-drying. Mathiowitz does not disclose a method “which is basically
the same as the instant method” (Examiner’s Answer, page 5, line 12), but rather discloses
the preparation of protein microspheres by a phase separation, solvent removal process.
Nor does Mathiowitz disclose or suggest the numerical limitations on size and size
distribution recited in the claims before us. Viewing the situation in this light, we find that
(1) Mathiowitz does not disclose a product which reasonably appears to be identical with
or only slightly different than applicants’ claimed microcapsules; and
(2) the examiner has not established an adequate evidentiary basis on this record to shift
the burden of proof to applicants under principles of law set forth in In re Fitzgerald, 619
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