Appeal No. 2001-1027 Page 4
Application No. 08/442,210
“[I]n an ex parte proceeding to obtain a patent, . . . the Patent Office has
the initial burden of coming forward with some sort of evidence tending to
disprove novelty.” In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA
1970). The standard under § 102 is one of strict identity. “Under 35 U.S.C.
§ 102, every limitation of a claim must identically appear in a single prior art
reference for it to anticipate the claim.” Gechter v. Davidson, 116 F.3d 1454,
1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). “Every element of the claimed
invention must be literally present, arranged as in the claim.” Richardson v.
Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236, 9 USPQ2d 1913, 1920 (Fed. Cir.
1989).
We agree with Appellants that the examiner has not met his burden of
showing that the products disclosed by Eckenhoff meet all of the limitations of the
instant claims. We note that the examiner’s explanation of the rejection does not
address several limitations of the instant claims. For example, the examiner
does not address the requirements for a “solid caplet” or for a particular dosage
of drug contained therein
Particularly glaring is the examiner’s failure to point to a specific passage
in the reference showing a caplet having a convex surface on one end, with a
specific radius of curvature relative to the radius of the caplet. In reviewing the
reference ourselves, we have been unable to find such a disclosure.
Thus, the examiner has not shown that the prior art disclosed a drug-
delivery system, whether characterized as caplet or capsule, having the
particular geometric limitations recited in the instant claims. The examiner has
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