Appeal No. 2004-0482 Page 6 Application No. 09/216,247 Lacy (column 8, lines 19-23), “with this class of hydrophilic surfactants there is no necessity to include any lipophilic surfactant component at all….” Accordingly, Lacy discloses (column 8, lines 24-30): [I]n a further aspect, the present invention provides a carrier system for a hydrophobic drug which comprises: (a) a digestible oil, (b) a transesterification product of polyoxy-ethylene glycol with glycerol esters of capric and/or caprylic acids as hydrophilic surfactant, and (c) optionally a lipophilic surfactant. Lacy discloses that Labrasol (glyceryl caprylate/caprate and PEG-8 caprylate/caprate) and Softigen 767 (PEG-6 caprylic/capric glycerides) as examples of this type of hydrophilic surfactant. See Lacy, column 8, lines 31-37. Since this composition includes (1) a hydrophobic drug, (2) a digestible oil, and (3) a hydrophilic surfactant, this embodiment of Lacy’s disclosure also does not support the examiner’s position. Therefore, while it may be true that Lacy suggests, under certain circumstances, that a digestible oil or a lipophilic surfactant are not necessary, and may be removed from Lacy’s composition, for the foregoing reasons we find nothing in Lacy to suggest that even if these components were removed they would lead to appellants’ claimed invention. In this regard, we remind the examiner that “[t]he Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967). For the foregoing reasons, it isPage: Previous 1 2 3 4 5 6 7 8 NextLast modified: November 3, 2007