Appeal No. 2001-0941 Page 7
Application No. 08/890,705
3.6% hydroxypropylmethylcellulose does not meet the claim limitation of 8-18%
dissolution regulator.
The examiner asserted that “formulating compositions comprising [the
recited ingredients] in amounts encompassed in the claimed ranges, would have
been obvious in view of the disclosure of Erdelmeier.” Examiner’s Answer,
pages 4-5. The examiner, however, cited no evidence and provided no scientific
reasoning to support this assertion. We therefore agree with Appellants that the
examiner has not shown that the cited references would have made obvious a
method of making the composition recited in the instant claims.
A prima facie case of obviousness must account for all the limitations of
the claims. See In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA
1976) (“[W]e must give effect to all claim limitations.” (emphasis in original)). The
examiner has not adequately explained how the prior art would have rendered
obvious the composition recited in the instant claims, and therefore has not
shown that the claimed invention as a whole would have been prima facie
obvious.
We also agree with Appellants that the examiner has not shown that the
processing steps recited in the claims would have been obvious based on the
cited references. The examiner cites Lavie, Remington’s, and Evenstad for their
disclosures of individual elements of the claimed process. Lavie is cited for its
disclosure of conventional processing of tablets containing a compound isolated
from a different Hypericum species (Examiner’s Answer, page 5), Remington’s is
cited for its disclosure of conventional dry granulation tableting (Examiner’s
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007