Appeal No. 2002-1353 Page 4
Application No. 09/268,353
the desire to obtain a tablet form that is convenient for oral
administration.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). “It is well-established that before a conclusion of obviousness may be
made based on a combination of references, there must have been a reason,
suggestion, or motivation to lead an inventor to combine those references.” Pro-
Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d
1626, 1629 (Fed. Cir. 1996). “Even when obviousness is based on a single prior
art reference, there must be a showing of a suggestion or motivation to modify
the teachings of that reference.” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d
1313, 1316-17 (Fed. Cir. 2000).
In this case, the examiner has pointed to nothing in the prior art that would
have led those skilled in the art to modify the tablets disclosed by Gram in order to
reduce the amount of excipients to no more than 20% by weight. As Appellants
point out, all of the exemplary compositions disclosed by Gram contain much
more than 20% by weight of excipients. According to Appellants, the amount of
excipient in Gram’s compositions ranges from 49.4% to 87.5%. See the Appeal
Brief, page 5. The examiner does not dispute Appellants’ figures.
In addition, we note that Gram discloses that, in one “preferred
embodiment”, the amount of starch per dosage unit is “most preferred from about
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