Appeal No. 2002-0450
Application No. 09/142,814
suggestion or support for preparing such layer in a manner which completely surrounds
a microsphere to form individual beads.
As to the method of making bioabsorbable beads of claim 10, we similarly find
that the examiner has not provided sufficient evidence to support a prima facie case of
obviousness, as, in our view, the cited references, alone or in combination do not
suggest a step of coating porous cores with a substantially non-porous later of a second
bioabsorbable material to form a bioabsorbable bead.
After evidence or argument is submitted by the applicants in response to an
obviousness rejection, "patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to persuasiveness of the argument."
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); see In re
Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787 (Fed. Cir. 1984) ("All evidence
on the question of obviousness must be considered, both that supporting and that
rebutting the prima facie case."). On balance, we believe that the totality of the
evidence and argument presented by the examiner and appellants weighs in favor of
finding the claimed invention non-obvious in view of the cited references. The rejection
of the claims for obviousness over Berg in view of Silver or Arnold is reversed.
CONCLUSION
10
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