Appeal No. 1997-3307
Application No. 08/121,402
The mere fact that a certain thing may result from a given
set of circumstances is not sufficient.” Ex parte Skinney,
2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1986). Here, the
examiner has not provided the required evidence or
technical reasoning showing that the methylcellulose
derivative of the Burdkick references would necessarily has
as bulk density of 0.30 g/cc or greater. The examiner has
the initial burden of providing evidence or technical
reasoning which shows that the methylcellulose derivative
of Burdick ‘908 and ‘909, and the examiner has not carried
out this burden. See In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1657 (Fed. Cir. 1990); In re King, 801 F.2d
1324, 1327, 231 USPQ 136, 138-39 (Fed. Cir. 1986).
Moreover, the examiner has not explained why one of
ordinary skill in the art would have been motivated to
modify the bulk density of the methylcellulose derivative
to arrive at appellants’ claimed invention.
Hence, we reverse both the 35 U.S.C. § 102(e) and
35 U.S.C. § 103 rejection over Burdick ‘908 and ‘909.
Rejection III2
Because the reference of Knechtel does not cure the
aforementioned deficiencies of the Burdick refereces (for
reasons discussed later in this opinion) we also reverse
2 Appellants argue that Knechtel cannot be applied as prior
art for the same reasons given in footnote 1. (Brief, page
8).
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