Appeal No. 2003–0681 Page 3
Application No. 09/169,459
OPINION
The examiner bears the initial burden of presenting a prima facie case of unpatentability.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). This burden must
be satisfied by the examiner, otherwise, without more, applicants are entitled to a patent. Id.
To satisfy the burden, the examiner must establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed.
Cir. 1988). In so doing, the examiner must not only identify where in the references the
limitations of the claim are taught, the examiner must also identify what in the prior art supports
a finding of a reason, suggestion, or motivation to modify the prior art or to combine prior art
references to arrive at the claimed invention. See In re Huston, 308 F.3d 1267, 1280, 64
USPQ2d 1801, 1810 (Fed. Cir. 2002); In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433
(Fed. Cir. 2002). “The motivation, suggestion or teaching may come explicitly from statements
in the prior art, the knowledge of one of ordinary skill in the art, or, in some case the nature of the
problem to be solved.” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir.
2000). But, importantly, the evidence must support the rationale of the examiner. Lee, 277 F.3d
at 1343, 61 USPQ2d at 1433.
The rejection is based on the conclusion that it would have been obvious to one of
ordinary skill in the art at the time of invention to modify the size of Wang’s microparticles
(Answer, p. 5). As found by the Examiner, Wang describes microencapsulation of antibodies
using the required quaternary complex (Answer, p. 3). The Examiner acknowledges that Wang
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007