Appeal No. 1999-0400
Application No. 08/316,938
meaningful specificity or clarity. In this light, the
examiner’s findings as to what Ibsen teaches, and does not
teach, relative to the appellants’ claimed method is unduly
speculative. This fundamental flaw in Ibsen finds no cure in
the examiner’s additional application of Szczesny, Edmonds,
Bremer and Baichwal.
Hence, we shall not sustain the standing 35 U.S.C. §
103(a) rejection of claim 1, and claims 8 and 24 which depend
therefrom, as being unpatentable over Ibsen in view of
Szczesny, Edmonds, Bremer and Baichwal.3
X. The 35 U.S.C. § 103(a) rejection of claims 25 through 27 and
31/27 as being unpatentable over Edwards in view of Madsen
The appellants do not dispute the examiner’s finding (see
page 8 in the answer) that Edwards meets all of the limitations
in independent claim 27 except for the one requiring the
agglomerate-forming sieve to have the form of a U-shaped
trough. The examiner’s reliance on Madsen to overcome this
deficiency is unsound.
3Upon return of the application to the technology center,
the examiner may wish to reconsider the patentability of claim
24 in light of Edwards’ disclosure that lactose can be used as
an inert solid diluent with form X for administration by
inhalation (see Edwards at page 3, lines 30 through 34).
19
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