Appeal No. 2005-0151
Application No. 09/615,305
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72,
223 USPQ 785, 787-88 (Fed. Cir. 1984). It is the examiner’s responsibility to show that
some objective teaching or suggestion in the applied prior art, or knowledge generally
available in the art, would have led one of ordinary skill in the art to combine the
references to arrive at the claimed invention. Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996).
Here, we find that the examiner acknowledges that Wooley does not teach
vesicles having membranes “formed from” block tripolymers as required by the claims.
Although the examiner argues that Wooley provides guidance for the preparation of
such particles, he does not point to any teachings to support his position. The examiner
is cautioned that a prima facie case of obviousness must be based on fact, not
unsupported generalities. In re Freed, 425 F.2d 785, 787, 165 USPQ 570, 571 (CCPA
1970); In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
As to the examiner’s contention that the teachings of Martin also would have
motivated one skilled in the art to use block tripolymers in the construction of the
nanoparticles taught by Wooley, we find no basis in the reference, and none has been
pointed out by the examiner, to support this conclusion. (See our discussion of Martin,
above). To the contrary, the only mention we find of vesicles comprising membranes
formed from block tripolymers is in the appellants’ specification. Thus, we agree with
the appellants that the examiner has engaged in impermissible hindsight to arrive at the
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