Appeal No. 2001-2157 Page 10
Application No. 08/918,741
we point out that "[w]here a reference is relied on to support a rejection, whether or not
in a 'minor capacity,' there would appear to be no excuse for not positively including the
reference in the statement of rejection." In re Hoch, 428 F.2d 1341, 1342 n.3, 166
USPQ 406, 407 n.3 (CCPA 1970). The examiner has not included the Concise
Encyclopedia Chemistry in a statement of any rejection under 35 U.S.C. § 103(a), and
belated citation of that reference in Paper No. 13, page 5, is improper. Be that as it
may, we have reviewed the Concise Encyclopedia Chemistry, page 67. In our
judgment, this reference does not disclose that spray-drying was known for preparing
products structurally similar to raloxifene. Nor does this reference refute applicants'
contention that, at most, it would have been obvious to try preparing raloxifene in an
amorphous form by spray-drying.
Conclusion
In conclusion, the examiner has not established that the prior art would have led
a person having ordinary skill to the claimed invention with a reasonable expectation of
success. Accordingly, the examiner has not established a prima facie case of
obviousness of claims 1 and 3 through 10; and the examiner's decision rejecting those
claims under 35 U.S.C. § 103(a) is reversed.
REVERSED
)
Sherman D. Winters )
Administrative Patent Judge )
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