Appeal No. 2006-0274
Application No. 09/415,890
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art. In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993). An obviousness analysis requires
that the prior art both suggest the claimed subject matter and reveal a reasonable
expectation of success to one reasonably skilled in the art. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991). With this as background, we analyze
the prior art applied by the examiner in the rejection of the claims on appeal.
It is the examiner’s position that (Answer, page 6)
Janoff teaches the instant invention, but uses solvents such as
DMSO (col. 4, lines 49-50). Szoka discloses such solvents to include the
instantly claimed DMF (col. 4, line 50, col. 5, lines 8-13), also used with
co-solvents and the Janoff instant antibiotics: amphotericin, pimaricin (col.
3, bottom).
It would have been obvious to a person of ordinary skill in the art at the
time the invention was made, desiring to prepare stable hydrophobic
antibiotic solvent vehicles, to prepare one of Janoff. The particular solvent
is seen as one within the purview of the artisan to select, as equivalents
taught by Szoka.
The examiner further argues (Answer, page 7)
Appellants arguments re Szoka are that no prima facie obviousness
is shown, however both references show a variety of solvents, and Janoff
states that the solvent is chosen as to maximize solution of the particular
drug, provide biocompatability and reduce toxicity and flammobility [sic]
(col.10, lines 10-13). Szoka’s expanded list of solvents is shown to include
Janoff’s DMSO and alcohols, and DMA (co1.4, lines 46-61). Szoka utilizes
these solvents with lipid particles and the instant polyene antibiotics,
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