Appeal No. 1997-2236
Application 08/341,478
statement of the rejection on pages 2-4 of the answer does not explain why one of ordinary
skill in the art would have found it obvious to use hydroxypropyl cellulose, as required by
claims on appeal, instead of the hydroxypropylmethyl cellulose used in each of the
references. Indeed, the only acknowledgment which appears in the examiner's answer that
the references are directed to a different compound than that required by the claims on
appeal appears in the sentence bridging pages 4-5 wherein the examiner states "[t]here is
no evidence of record that delivery of a pharmaceutical compound from a formulation
comprising [hydroxypropyl cellulose] is substantially different, superior or unexpected from
a formulation which comprising [hydroxypropylmethyl cellulose]."
By the terms of the statute, the determination of obviousness under 35 U.S.C.
§ 103 must be premised upon the "subject matter as a whole" of a given claim. Here, the
evidence of obviousness relied upon by the examiner is directed to the use of
hydroxypropylmethyl cellulose, not hydroxypropyl cellulose as required by the claims on
appeal. Clearly, the examiner has not considered the subject matter as a whole in
determining the obviousness of the subject matter of the claims on appeal. It is well
established that the initial burden of establishing reasons of unpatentability rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).
Here, the examiner put the cart before the horse in requiring that appellants establish that
using hydroxypropyl cellulose in the claimed invention results in a "different, superior or
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