Ex Parte Bott et al - Page 13

                 Appeal 2007-0851                                                                                      
                 Application 10/385,213                                                                                

                        Appellants argue that “Chien does not teach or suggest these                                   
                 [compounds] as part of the water and hydrophilic solvent used as a carrier                            
                 for the pharmaceutical” (Br. 15).  We agree with Appellants that the                                  
                 Examiner has not set forth a prima facie case that claim 22 would have been                           
                 obvious.                                                                                              
                        Chien states that the water miscible solvent “increase[s] the aqueous                          
                 solubility of [the] pharmaceutical” (Chien, col. 3, ll. 21-31).  Chien does not                       
                 teach that the water miscible solvent is PVA or PVP, nor does the Examiner                            
                 cite any evidence that PVA or PVP would be expected to increase the                                   
                 aqueous solubility of enzymes.  There is also no evidence of record that                              
                 PVA or PVP was considered to be interchangeable with the glycols                                      
                 described in Chien that would given a person of ordinary skill in the art                             
                 reason to have substituted one for the other.  See KSR Int’l Co. v. Teleflex                          
                 Inc., 127 S.Ct. 1727, __, 82 USPQ2d 1385, 1395 (2007).   Therefore, we                                
                 agree with Appellants that the Examiner has not adequately shown that it                              
                 would have been obvious to include PVA or PVP in the solvent system                                   
                 described in Chien.   We therefore reverse the rejection of claim 22 and of                           
                 claims 23 and 24, which depend from claim 22.                                                         
                        Claim 31 depends from claim 1 and requires that the topical                                    
                 preparation contain a “topical dressing compris[ing] a patch.”  The Examiner                          
                 relies on Webster’s Dictionary for teaching that the term “patch” is defined                          
                 as “a covering or dressing applied to protect a wound or sore” and therefore                          
                 “does not require any particular physical form, only that the composition                             
                 cover[s] a region of interest” (Answer 13).  The Examiner argues that the                             
                 compositions of Chien and Powell “would cover whatever portion of the                                 


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