Appeal No. 1996-3860
Application 08/312,819
It is the examiner’s position that it would have been obvious to one of ordinary skill
in this art to wrap the caplet of Barshay with gelatin, gelatin being a known
hydrophilic/hydratable material as taught by Weidenheimer, using the process of Talbot;
and that it further would have been obvious to make the caplet structure that described in
Wai and to use color for one half of the capsule as in Boardman.
The examiner’s position is untenable. In determining the propriety of an examiner’s
case for obviousness, it is necessary to ascertain whether or not the reference teachings
would have suggested to one of ordinary skill in the relevant art to make the proposed
substitution, combination or modification. ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). Here, the examiner has only
pointed to isolated teachings in each of the applied references.
The examiner has not provided a fact-based explanation why one having ordinary skill in
the art would have found it obvious to combine the references in the manner suggested by
the examiner.
In stating these rejections in the first Office Action, the examiner merely listed the
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