Ex Parte Bott et al - Page 12

                 Appeal 2007-0851                                                                                      
                 Application 10/385,213                                                                                

                 microns (id. at col. 5, ll. 63-67).  Thus, we find that Chien describes droplets                      
                 of from 10 to 200 microns, which is within the size range recited in claim 3.                         
                        Appellants argue that nothing in Chien and Pfister “suggests their                             
                 combination in the manner proposed by the Examiner” (Br. 15).  Because                                
                 we are not relying on Pfister for the features of claim 3, we are not                                 
                 persuaded by this argument.                                                                           
                        We conclude that there is a prima facie case that claim 3 would have                           
                 been obvious in view of Chien, Pfister, Powell, and Webster’s Dictionary,                             
                 which Appellants have not rebutted.  We therefore affirm the rejection of                             
                 claim 3 under 35 U.S.C. § 103.  Claims 4-10 fall with claim 3.  Because our                           
                 reasoning differs from that of the Examiner, we designate our affirmance of                           
                 the obviousness rejection of claims 3-10 as a new ground of rejection in                              
                 order to give Appellants a fair opportunity to respond.                                               
                        Claim 22 depends from claim 1 and requires that the hydrophilic                                
                 component include polyvinyl alcohol (PVA) or polyvinylpyrrolidone (PVP).                              
                 The Examiner relies on Chien for teaching that “the hydrophilic solvent                               
                 comprises water and ‘water miscible solvents which increase the aqueous                               
                 solubility of the pharmaceutical’” and that “[g]lycols such as polyethylene                           
                 glycol, propylene glycol, butylene glycol, glycerol formal, and glycofurol                            
                 are suitable solvents” (Answer 12-13).  The Examiner argues that “the                                 
                 choice of hydrophilic solvent is an optimizable parameter that depends on                             
                 the active agent.  PVA is an organic polyol, as are the glycols recited by                            
                 Chien et al.  Because PVA is miscible in water and is similar in structure to                         
                 the preferred glycols of Chien,” there would have been “a reasonable                                  
                 expectation of success in substituting one for the other.”  (Id. at 13.)                              


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