Appeal No. 2005-0224
Application No. 08/878,146
what they assert to be general knowledge to negate patentability on the ground of
obviousness, must articulate that knowledge and place it of record, since examiners are
presumed to act from the viewpoint of a person of ordinary skill in the art in finding
relevant facts, assessing the significance of prior art, and making the ultimate
determination of the obviousness issue. Failure to do so is not consistent with either
effective administrative procedure or effective judicial review. Examiners cannot rely on
conclusory statements when dealing with particular combinations of prior art and
specific claims, but must set forth the rationale on which they rely. In re Lee, 277 F.3d
1338, 1343-1344, 61 USPQ2d 1430, 1433-1434 (Fed. Cir. 2002); In re Thrift, 298 F.3d
1357, 1362, 63 USPQ 2d 2002, 2008 (Fed. Cir. 2002). As summarized by appellants,
“Maa does not teach that the particle masses described therein have the delivery
efficiencies of the claims or the dosage mass of the claims...” Reply Brief, page 3.
In sum, we do not find that the examiner has established with appropriate
analysis or evidence that Maa describes delivering 5 milligrams of active agent, as
claimed.
The rejection of the claims in view of Maa is reversed.
Other Issue
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