Ex parte SUTTON et al. - Page 6




              Appeal No.  1999-2230                                                                                        
              Application 08/465,236                                                                                       

                     Erbel discloses ultrasonic contrast agents composed of microparticles which                           
              contain a gas and polyamino-dicarboxylic acid-co-imide derivatives; processes for their                      
              preparation; and their use as diagnostic and therapeutic agents.  Based on our review of                     
              this reference, we find that Erbel’s microparticles have significantly smaller particle sizes                
              compared with the microcapsules recited in the appealed claims.  See particularly, Erbel,                    
              column 7, lines 15 through 30; and column 10, Table 1.  Neither Erbel nor Sands discloses                    
              or suggests the numerical limitations on size and size distribution recited in the appealed                  
              claims.                                                                                                      
                     In the Answer, paragraph bridging pages 4 and 5, the examiner considerably                            
              overstates 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” (Examiner’s Answer, page 5, line 12), but rather discloses                   
              the preparation of protein microspheres by a phase separation, solvent removal process.                      
              Nor does Mathiowitz disclose or suggest the numerical limitations on size and size                           
              distribution recited in the claims before us.  Viewing the situation in this light, we find that             
              (1) Mathiowitz does not disclose a product which reasonably appears to be identical with                     
              or only slightly different than applicants’ claimed microcapsules; and                                       
              (2) 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                 

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