Appeal No. 2005-0139 Page 4
Application No. 10/227,433
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
(Fed. Cir. 1988). “A rejection based on section 103 clearly must rest on a factual
basis, and these facts must be interpreted without hindsight reconstruction of the
invention from the prior art. In making this evaluation, all facts must be
considered. The 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. To the extent the Patent Office rulings are
so supported, there is no basis for resolving doubts against their correctness.
Likewise, we may not resolve doubts in favor of the Patent Office determination
when there are deficiencies in the record as to the necessary factual bases
supporting its legal conclusion of obviousness.” In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. Denied, 389 U.S. 1057 (1968)
(emphasis in original).
The examiner asserts that the combination of Staniforth and York render
the claimed invention obvious, as the references and the instant specification
address the same problem—flow properties and cohesive forces and powder
inhalation drugs. See Examiner’s Answer, page 6. The examiner also contends
that “Staniforth also recognizes that surface properties such as shape, texture ad
[sic] size of the carrier particles is important so as to give sufficient adhesion
force to hold active drug particles and still release them once inhaled. Thus,
Staniforth provides a solution to the cohesivity problem of particles by suggesting
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