Appeal No. 2001-2633 Page ~ PAGE ~5~
Application No. 07/323,182
was made to select a glycolipid from the genus of membrane components
disclosed by Kikuchi. To the contrary, the examiner simply asserts (Answer,
bridging paragraph, pages 4-5), “[o]ne would have been motivated to select
glycolipids as the membrane component because they are listed as being among
the [genus of] exemplary lipids.” For the foregoing reasons, it is our opinion that
the examiner’s assertion is incompatible with the relevant legal precedent.
Similarly, we are not persuaded by the examiner’s assertion (Answer, page 4),
“[o]ne would have been motivated to use acetaminophen or sodium salicylate
because they are mentioned by name in the patent.” The examiner failed to
explain why one of ordinary skill in the art would have selected acetaminophen
or sodium salicylate from the genus of drugs disclosed by Kikuchi for inclusion in
a liposome consisting essentially of a glycolipid. Once again, for the reasons set
forth above, it is our opinion that the examiner’s assertion is incompatible with
the relevant legal precedent.
On reflection, it is our opinion that the examiner failed to meet his burden
of providing the evidence necessary to establish a prima facie case of
obviousness. Accordingly, we reverse the rejection of claims 81, 83-86 and 88-
97 under 35 U.S.C. § 103 as being unpatentable over Kikuchi.
Kikuchi in view of Lenk:
Relying on Kikuchi as set forth above, the examiner finds (Paper No. 48,
page 4), that Kikuchi do not teach a stable plurilamellar liposome as set forth in
appellants’ claim 82. To make up for this deficiency, the examiner relies on
Lenk. According to the examiner (Answer, page 5), “[o]ne would have been
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