Appeal No. 2006-0392 Page 3
Application No. 10/034,981
intravenously administers 800 mg of valproate. One having
ordinary skill in the art would have been motivated to intravenously
administer valproate since medications intravenously administered
gets to the blood stream faster.
Final Rejection, mailed May 19, 2003, pages 2-3.
Appellant argues that the examiner has failed to establish a prima facie
case of obviousness. See Appeal Brief, page 5. We agree, and the rejection is
reversed.
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).
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