Appeal No. 2004-0378
Application No. 09/765,675
Although Simonnet discloses transparent nanoemulsion compositions, we do not
agree with the examiner that Simonnet can properly be combined with Restle and
Ziegler. Rather, we find ourselves in agreement with Appellants’ argument that
Simonnet merely discloses ionic amphiphilic lipids as being one of
numerous optional ingredients. Further, Simonnet does not attribute any
properties to these lipids. . . . Accordingly, Simonnet fails to provide the
requisite motivation to make the proposed modification.
Appeal Brief, page 22. That is, Simonnet discloses that a transparent nanoemulsion
can be produced if a “siliconized surfactant” is used (pages 3-4), but does not provide a
basis for those skilled in the art to expect that a transparent composition would result
from the combination of Restle and Ziegler (with or without the additional ionic
amphiphilic lipid discussed by Simonnet). We therefore reverse the rejection of claim
63.
We recognize that our rationale for affirming the rejection as applied to claims 23-
29 differs from that of the examiner. We therefore designate our affirmance with
respect to this rejection as a new ground of rejection under 37 CFR § 1.196(b).
4. Claim 20
The examiner rejected claim 20 as obvious in view of the combined disclosures
of Restle, Ziegler, Simonnet, and Matzik. With this rejection as well, we conclude that
the claimed composition would have been obvious in view of Restle and Ziegler alone
and therefore affirm the rejection but designate our affirmance a new ground of
rejection.
Claim 20 is directed to the composition of claim 1, wherein the amphiphilic lipid
recited in claim 1 is either a nonionic amphiphilic lipid (see claim 17) or is an anionic
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