Appeal No. 2004-0383 Page 3
Application No. 09/703,279
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). All of the claims
are directed to a powder composition containing the combination of a solid particulate
component and chitosan particles. All of the claims require that chitosan be present in the
powder composition at a concentration of about 0.01 to about 10% by weight. The rejection
does not provide the required evidentiary basis supporting a prima facie case of obviousness for
such a powder composition.
First, our review indicates that the Examiner has not adequately supported the finding
that “Yoshihide’s patent provides for various amounts of chitosan in the formulation as
demonstrated in the examples (2 to 20%).” (Answer, p. 4). Turning to the examples (Yoshihide,
pp. 8-15), we do not find the percentage concentrations referred to in the rejection. Where, as
here, the amounts are not directly stated, the Examiner must provide more specific details as to
how the disclosure supports the finding. It appears that the Examiner may have been referring to
a range of chitosan discussed at page 5 of the reference. Here a range of 2 to 20% is discussed,
but it refers to the concentration of dissolved chitosan in an acid solution subsequently
coagulated and washed to form granulated chitosan, not the range of concentration of particulate
chitosan in a powder composition containing a solid particulate. Yoshihide, in other portions of
the reference, indicates a higher level of chitosan is used in the powder composition. Yoshihide
disperses an amount of 0.01 to 1 part by weight titanium oxide powder per 1 part by weight
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