Appeal 2007-2212
Application 10/667,472
corticosteroids. (Liversidge, col. 3, ll. 38-40; col. 3, l. 53 to col. 4. l. 14.)
Liversidge further describes a screening method to discern which types of
drugs may be administered with the most compatible surface modifiers.
(Liversidge, col. 7, ll. 21-46.) One of ordinary skill in the art, understanding
that the surface modified nanoparticles of Liversidge provide for greater
bioavailability of drug, and knowing that drug delivery to the lung is difficult,
would have been motivated to deliver a corticosteroid intended for delivery to
the lung to treat asthma, such as beclamethosone diproprionate in the form of
the surface modified nanoparticles for the purpose of increasing bioavail-
ability of the drug to the lungs. The Examiner additionally argues that the
claims are broad and are not limited to surface modifiers that provide a stable
composition of beclomethasone dipropionate, indicating there are no
exclusions in the claims of surface modifiers which would not provide for a
stable drug. (Answer 6.)
Furthermore, it is error to conclude that
a patent claim cannot be proved obvious merely by
showing that the combination of elements was ‘obvious to try.’
. . . When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to anticipated success, it is likely the product [is] not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.”
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742, 82 USPQ2d
1385, 1397 (2007). Therefore, we are not persuaded by Appellants
arguments against a prima facie case of obviousness.
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