Ex parte SHIBLEY et al. - Page 10




              Appeal No. 1997-2512                                                                                           
              Application No. 08/118,905                                                                                     

              penetrating the tube at its upper section to release the material to the mucosal membrane                      
              of the animal,” as recited in appealed claim 12.  Accordingly, we are constrained to                           
              reverse the examiner’s rejection of claims 12 and 13 under 35 U.S.C.                                           
              § 102(b).                                                                                                      
                                            Rejection under 35 U.S.C. § 103                                                  

                      We next consider the rejection of claims 14 and 15 under 35 U.S.C. § 103 as                            
              unpatentable over the combined teachings of Frenkel and Whittaker, or over the combined                        
              teachings of Frenkel and Cassou.                                                                               
                      According to the examiner, “[i]t would have been obvious to a person of ordinary                       
              skill in the art at the time the invention was made to employ either [sic] the tube of                         
              Whittaker et al [or Cassou] to dispense the vaccine of Frenkel et al. because the art                          
              teaches that tube shaped devices are useful for buccal delivery of medicaments.”  See                          
              page 3 of the Answer.  We disagree.                                                                            
                      The initial burden of establishing a prima facie case to deny patentability to a                       
              claimed invention rests upon the examiner.  In re Piasecki, 745 F.2d 1468, 223 USPQ                            
              785 (Fed. Cir. 1984).  In carrying out this burden, the examiner must consider each and                        
              every limitation.  In re Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ 789, 791 (CCPA                              
              1974).                                                                                                         

                      Frenkel discloses the oral administration of Toxoplasma gondii (T. gondii) to cats.                    

              In particular, Frenkel states:                                                                                 



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