Appeal 2007-2212
Application 10/667,472
Liversridge). See, e.g., In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67,
71 (CCPA 1979); In re Merchant, 575 F.2d 865, 869, 197 USPQ 785, 788
(CCPA 1978) (“An applicant relying upon a comparative showing to rebut a
prima facie case must compare his claimed invention with the closest prior
art'').
Appellants have failed to explain how the data in Example 1 show
unexpected results over the closest prior art, i.e., Liversidge. In addition,
Appellants’ data are not commensurate in scope with claim 10. First, the
beclomethasone diproprionate particle size distribution in Example 1 is
0.26+0.13 mm (0. 26x106+0.13x106 nm) (Spec. 20), with 80% of the
particles being “less than 2.5 mm” (less than 2.5x106 nm) (Spec. 22). These
values are much greater than those of claim 10 which requires “an average
particle size of less than about 1000 nm.” Second, only Formulation IV in
Table II appears to show superior results to Formulation I (the comparative
example), suggesting that only a surfactant concentration of 0.1% dispersed
in a 6 mL volume provides for substantially greater bioavailability of
beclamethasone diproprionate. (Spec. 23.) Again, claim 10 is not so limited.
Thus, these data are not sufficient to overcome the Examiner’s prima facie
case of obviousness.
Moreover “when the question is whether a patent claiming the
combination of elements of prior art is obvious,” the relevant question
is “whether the improvement is more than the predictable use of prior
art elements according to their established functions.” KSR Int’l Co.
v. Teleflex Inc., 127 S. Ct. 1727, 1740, 82 USPQ2d 1385, 1396
(2007). In the present case, the prior art evidences that when
nanoparticles are treated with a surface modifier adsorbed on the
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