Appeal No. 2004-1982 Page 2
Application No. 09/878,034
The examiner relies upon the following reference:
Morella et al. (Morella) CA 2,068,366 May 11, 1992
Claims 1-9 and 11-24 stand rejected under 35 U.S.C. § 103(a) over
Morella. After careful review of the record and consideration of the issue before
us, we reverse.
DISCUSSION
According to the rejection, “Morella discloses a taste masked free flowing
powder including microcapsules, wherein each microcapsule includes an
effective amount of a core element including at least one pharmaceutically active
ingredient and a substantially smooth and continuous microcapsule coating on
the core element formed from a coating composition including a water-insoluble
polymer.” Examiner’s Answer, page 3. Morella teaches further that the coating
composition can further comprise an enteric polymer. See id. at 4. The rejection
concludes:
Morella [ ] is deficient in the sense that the patent does not
teach the particular release profile claimed by Applicant. However,
it is the position of the examiner that because Morella [ ] teaches
the same ingredients as Applicant, it would flow that the invention
disclosed by Morella [ ] would have the same release profile as the
invention claimed by Applicant. The burden is shifted to Applicant
to provide evidence that the two compositions exhibit different
profiles, if this is the characteristic to be relied upon to show
patentable distinction. Absent such an evidence [sic], this invention
as a whole would have been prima facie obvious to one of ordinary
skill in the art at the time the invention was made.
Id. at 4.
The burden is on the examiner to set forth a prima facie case of
obviousness. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598-99
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007