Appeal No. 2006-0139
Application No. 09/583,228
Where the prior art, as here, gives reason or motivation to make the claimed
invention, the burden then falls on an appellant to rebut that prima facie case. Such
rebuttal or argument can consist of any other argument or presentation of evidence that
is pertinent. In re Dillon, 919 F.2d 688, 692-93, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990) (en banc).
In response to the examiner's prima facie case of obviousness, appellant
contends that Morella describes additional components in the core coating and that,
"[t]here is no suggestion nor any motivation to modify this composition and eliminate the
other two components." Brief, page 10. However, in the present case appellant's
claims do not limit coating components to those recited in the claim due to the open
ended language "comprising", as would be the case if the claimed components were
limited by the use of a transitional phrase such as "consisting of" or possibly, "consisting
essentially of." Thus appellant's claim 1, as interpreted in accordance with claim
interpretation precedent, reads on the prior art coated tablets disclosed in Morella.
Appellant additionally argues that, "the claims recite that the coating includes
from 30 to 80% of a gastroresistant polymer soluble at a pH above 5.5. On the other
hand, Morella teaches an analogous component at a level of 1-30%, preferably 2-20%."
Brief, page 11. We are not persuaded by this argument. Appellant mischaracterizes
the teachings of Morella. In particular, Morella teaches "[t]he at least one enteric
polymer may be present in the coating in an amount of from approximately 1 to 60% by
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007