Appeal 2006-3086
Application 10/260,882
composition comprising simethicone. Stevens teaches that simethicone is
one of the active ingredients in the pharmaceutical composition (Stevens,
col. 1, ll. 42-55). Stevens teaches that fillers and lubricants may also be
added as excipients in the pharmaceutical composition comprising
simethicone (Stevens, col. 5, ll. 35-64). The Examiner relies on Wehling
and Crowley for a teaching that it would have been obvious to modify
Stevens’ composition by using magnesium carbonate as the lubricant or
filler (Answer 4). This is, however, exactly what Stevens expressly states
that one should not do. Specifically, when formulating an antacid with
simethicone “it is necessary to separate the simethicone from the antacid to
avoid the inactivation of the simethicone” (Stevens, col. 1, ll. 23-27).
Therefore, the rationale set forth by the Examiner is contrary to the
express teachings in the prior art relied upon and would lead to the
inactivation of one of the active agents in Steven’s composition. As
Appellants explain,
if a proposal for modifying the prior art in an effort to attain a
claimed invention causes the art to become inoperable or
destroys its intended function, then the requisite motivation to
make the modification would not have existed. See In re
Fritch, 972 F.2d 1260, 1265 n. 12, 23 U.S.P.Q.2d 1780, 1783 n.
12 (Fed. Cir. 1992).
(Reply Br. 5.) We agree, and the rejection of claims 2-11 and 13-32 under
35 U.S.C. § 103(a) as unpatentable over the combination of Stevens and
either Wehling or Crowley is reversed.
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