Appeal No. 1997-1160 Application No. 08/036,566 The examiner reasons (Answer, page 3) that “one of ordinary skill in the art of the management of paralysis agitans would recognize that the management is effected with the anti-Parkinson agent, regardless of the excipients utilized.” Appellants’ argue (see e.g., Brief, pages 4 and 6) that the claimed dosage form, which uses a carrier selected from the group consisting of hydroxypropylcellulose, hydroxypropylmethyl-cellulose and polyvinylpyrrolidone provides rate-controlled dosage which is distinct from the prior art. In response the examiner argues (Answer, page 5) that “the formulation for Artane [sic] disclosed in the PDR is as rate-controlled as that of the instant claimed invention.” We remind the examiner that “[t]he Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). To establish a prima facie case of obviousness, there must be some reason, suggestion, or motivation found in the prior art whereby a person of ordinary skill in the field of the invention would make the substitutions required. That knowledge cannot come from the applicants' disclosure of the invention itself. Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 678-79, 7 USPQ2d 1315, 1318 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). On the record before us, in contrast to the examiner’s position, we find no reasonable suggestion for using any one of appellants’ claimed carriers. Under these 4Page: Previous 1 2 3 4 5 6 NextLast modified: November 3, 2007