Appeal No. 2001-1044 Page 14
Application No. 08/881,216
We agree with Appellants that the examiner has not made out a prima
facie case of obviousness with respect to claim 23. While it is true that Woodle
discloses liposomes containing PEG-PE (column 4, lines 46-51) and discloses
that such liposomes have enhanced circulation time in the blood (column 4, lines
34-36), Woodle’s liposome formulations are disclosed for use in intravenous
administration. See column 11, lines 35-41 (“[T]he liposome composition is
designed for sustained release of a liposome-associated drug into the
bloodstream by long-life circulating liposomes.”) and column 12, lines 35-36
(“For sustained drug-release via the blood stream, the liposome composition is
administered intravenously.”).
The composition of claim 23, and the composition made obvious by the
other cited references, is a topical composition. The examiner has not
adequately explained why a modification disclosed to provide enhanced
circulation time in the bloodstream, for a composition administered intravenously,
would have suggested the same modification for a composition applied topically.
An adequate showing of motivation to combine requires “evidence that ‘a
skilled artisan, confronted with the same problems as the inventor and with no
knowledge of the claimed invention, would select the elements from the cited
prior art references for combination in the manner claimed.’” Ecolochem, Inc. v.
Southern Calif. Edison Co., 227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075
(Fed. Cir. 2000). Such evidence is lacking with respect to the instant rejection.
We therefore reverse the rejection of claim 23.
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