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
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