Appeal 2007-0526
Application 10/141,032
prepare a composition meeting claim 20’s interpatient variability limitation
(see Specification 23).
Thus, by following the suggestions in Edwards for improving inhaled
tobramycin formulations such as Vaghefi’s, one of ordinary skill would not
only have made particles with the physical properties recited in claim 20, but
would also have used preparative methods that result in a composition
meeting the interpatient variability limitation in claim 20. We therefore
agree with the Examiner that, taken together, Edwards and Vaghefi suggest
all the limitations in claim 20.
Appellants argue that the “amount of experimentation that would be
required for one of ordinary skill in the art to fabricate formulations
comprising particles containing any selected one of the hundreds of
pharmaceutical agents listed in Vaghefi, using the selected particle
fabrication methods taught by Edwards et al., would be undue
experimentation” (Br. 13). Appellants urge that the rejection relies on
impermissible hindsight to reconstruct the claimed invention (id. at 14).
We do not find this argument persuasive. The obviousness of
including tobramycin in Edwards’ inhaled powder formulation is not
undermined by the fact that Vaghefi includes tobramycin in a large list of
other therapeutic agents suitably administered by inhalation. For example,
in Merck & Co. v. Biocraft Labs. Inc., 874 F.2d 804, 806-07, 10 USPQ2d
1843, 1845 (Fed. Cir. 1989), the court held a composition obvious despite
the fact that the two ingredients in the composition were one of 1200
possible combinations suggested in the prior art. Id. at 807, 10 USPQ2d at
1846 (“That the [reference] discloses a multitude of effective combinations
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013