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 6Page: Previous 1 2 3 4 5 6 7 8 NextLast modified: November 3, 2007