Appeal No. 2003-0816
Application No. 09/693,254
hindsight in rejecting the claims. See W.L. Gore & Associates v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983); In re Rothermel, 276
F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960). For the reasons stated above and
in Appellant’s Briefs we reverse the Examiner’s rejection under 35 U.S.C.
§ 103(a).
Since we reverse for the lack of the presentation of a prima facie case of
obviousness by the Examiner, we need not reach the issue of the sufficiency of the
evidence as allegedly demonstrating unexpected results. See In re Geiger, 815
F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987).
OTHER ISSUES
Prior to disposition of the present application, the Examiner should re-
evaluate the patentability of the claimed subject matter over the WO ‘066 reference.
WO ‘066 describes a composition that comprises an erodible matrix, containing an
active substance, and a coating that can comprise a cellulose derivative. The
Examiner should determine if the description of the coating composition in the
claims requires more than one cellulose derivative and whether it would have been
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