Appeal No. 1999-1731
Application 08/411,815
would have been motivated to make the proposed modification.
The procedural error is compounded, because the examiner has considerably
overstated the significance of teachings found in Mathiowitz. The examiner’s position to
the contrary, notwithstanding, Mathiowitz does not disclose the preparation of protein
microspheres by spray-drying. Mathiowitz does not disclose a method “which is basically
the same as the instant method” (Answer, page 6, lines 2 and 3), but rather discloses the
preparation of protein microspheres by a phase separation, solvent removal process. Nor
does Mathiowitz disclose or suggest the step of including at least one charge-altering
material in or on microcapsules to adapt the microcapsules for selective targeting to an
area of a human or animal body. Accordingly, to the extent that the examiner characterizes
Mathiowitz alone as constituting sufficient evidence to establish a prima facie case of
anticipation or obviousness (Answer, page 6, lines 4 through 8), we disagree. The
examiner has not established an adequate evidentiary basis on this record to shift the
burden of proof to applicants under principles of law set forth in In re Fitzgerald, 619 F.2d
67, 70, 205 USPQ 594, 596 (CCPA 1980); and In re Best, 562, F.2d 1252, 1255, 195
USPQ 430, 433-34 (CCPA 1977).
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