Appeal No. 1997-0138
Application No. 08/383,912
supplied no evidence to demonstrate that the resulting
pharmaceutical composition would be free of any volatile
solvent . Nor has the examiner supplied any evidence1
regarding the claimed process for preparing the same.
The examiner argues that the pharmaceutical composition
resulting from the combined teachings of Kelly and Evans
"would inherently be free of solvent" because "the organic
solvent is typically evaporated from the composition in
liposome formation." See Answer, pages 4 and 5. However, the
examiner has not supplied any factual basis to support the
determination that the typical volatile organic solvent
evaporation technique would necessarily remove any and all
volatile solvents present in the pharmaceutical composition.
See Ex parte Levy, 17 USPQ2d 1461, 1463-64 (Bd. Pat. App. &
Int. 1990). It is well settled that inherency cannot be
established by probabilities or possibilities. See In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981); In
re Rijckaert, 9 F.3d 1531, 1534,
28 USPQ2d 1955, 1957 (Fed. Cir. 1993).
1Evans prepares liposomes in a volatile organic solvent
(chloroform). See column 5, example 6.
5
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