Appeal 1997-2447
Application 08/248,500
examiner's position is that the examiner has not called our
attention to that portion of Patel and Davis upon which a
proper inherency analysis can be made. More to the point is
the fact that the examiner's failure to articulate which
embodiment or embodiments "inherently" meet the
suspension/solution limitations of claim 1 makes it difficult
for applicants to confront the basis for the examiner's
rejection. Neither the applicants nor we should have to guess
the basis of an examiner's rejection. Compare In re
Rijckaert, 9 F.3d 1531, 1533, 28 USPQ2d 1955, 1957 (Fed. Cir.
1993) (when the PTO alleges that there is an explicit or
implicit teaching or suggestion in the prior art, it must
indicate where such a teaching or suggestion appears in the
prior art) (citing In re Yates, 663 F.2d 1054, 1057, 211 USPQ
1149, 1151 (CCPA 1981), both cited by applicants in their
reply brief.
We are not finding that Patel and Davis do not inherently
describe suspension/solution ophthalmic compositions within
the scope of applicants' claims. Rather, we hold that, on
this record, the examiner has failed to make out a case of
inherency. Likewise, the examiner has failed to sufficiently
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