Appeal No. 2001-1733 Page 5
Application No. 09/055,505
considered in judging the patentability of that claim against the prior art.” In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
However, we note the examiner’s statement (Supplemental Examiner’s Answer,
page 2), “[t]he particles formed by the Ramstack et al[.] reference could have a capped
and uncapped end since butyl alcohol would supply the butyl group as previously urged
by the applicant” [emphasis added]. In this regard, we note that Ramstack may just as
well not have an end-capped and uncapped end. The examiner bears the initial burden
of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). Stated differently, the examiner has the initial
duty of supplying the factual basis for his rejection. He may not, because he may doubt
that the invention is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual basis. See In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967). Accordingly, in the event of
further prosecution, we encourage the examiner to ensure that his position is clearly
supported by the prior art relied upon.
Also absent in the Examiner’s Answer is any discussion of how he construed the
claimed invention. For example, as set forth in claim 1, the composition “may contain” a
pharmaceutically-acceptable adjuvant. Does this mean that a pharmaceutically-
acceptable adjuvant is not a required component of the composition? If so, then it
seems reasonable that the composition comprises only an active material and a carrier.
We remind the examiner, as set forth in In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989):
[D]uring patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
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