Ex parte EDGREN et al. - Page 4

                  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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