Appeal No. 2004-2221 Page 3
Application No. 09/731,412
acknowledge that Gombotz discloses pore forming agents, they point out that in
methods of preparing the microspheres exemplified by Gombotz, there is no
mention of a pore forming agent. See id. at 7. Thus appellants conclude that
“[s]ince Gombotz does not disclose each claimed step, and in particular removal
of the pore forming agent with the solvent, . . . Gombotz does not anticipate claim
20.” Id. We agree.
The burden is on the examiner to set forth a prima facie case of
unpatentability. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1581
(Fed. Cir. 1996). Moreover, in order for a prior art reference to serve as an
anticipatory reference, it must disclose every limitation of the claimed invention,
either explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1432 (Fed. Cir. 1997).
Gombotz specifically teaches that “[p]ore forming agents are used to add
microstructure to the matrices (i.e., water soluble compounds such as inorganic
salts and sugars). They are added as particulates. The range should be
between one and thirty percent (w/w, polymer).” Id. at Col. 9, lines 52-55. The
disclosure of a w/w range suggests that the pore forming agents, if added, are
retained in the microparticle. The examiner points to nothing in the reference,
and our review of that reference, did not reveal any teaching or suggestion of
removing the pore forming agent. Therefore, the examiner did not meet his
burden of setting forth a prima facie case of anticipation, and the rejection is
reversed.
OTHER ISSUES
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