Appeal No. 2005-1290 4
Application No. 10/603,464
rejection for essentially those reasons set forth in the Brief. We add the following primarily
for emphasis and completeness.
As our reviewing court stated in In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992):
[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability.
This initial burden is not met unless the examiner supplies a sufficient factual basis to
support her rejection. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968)(The examiner may not resort to speculation to
supply deficiencies in its factual basis.).
Here, we find that Ozalvo teaches Enfamil premature powder produced by Mead
Johnson which were formed into tablets by compressing under a weight of 0.25 tons in a
press machine. See page 11. We find that Ozalvo then goes on to imply that this
tabulating method may not be applicable to different infant formulas. Id. Thus, on this
record, notwithstanding the examiner’s position to the contrary, we determine that the
examiner has not demonstrated that the tabulating method (compression weight) for
Enfamil premature powder is desirable for the composition of the type described in
Brochner. See In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir.
2000)(“to establish obviousness based on a combination of the elements disclosed in the
prior art, there must be some motivation, suggestion or teaching of the desirability of
making the specific combination that was made by the applicant”). In this regard, we note
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