Ex Parte Wolf - Page 4


                Appeal No. 2006-2467                                                  Page 4                 
                Application No. 10/157,644                                                                   

                      which the composition is administered is a manipulatable parameter                     
                      that is defined by the patient’s condition, i.e. the blood sugar profile.              
                Id. at 4-5.                                                                                  
                      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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