Appeal No. 1997-1913
Application 08/238,149
and emphasize that Williams? disclosure of PC (lecithin) liposomes is generic, and not all
lecithin liposomes would meet the requirements of claim 23. Reply Brief, page 2.
The examiner relies on Taylor to address this deficiency in Williams. Taylor
discloses colloidal suspensions of liposomes formed from egg yolk lecithin (page 2, lines
30-31, and page 4, lines 39-40). According to the examiner, ? it would have been obvious
to one skilled in the art to use pure or purified egg (yolk) lecithin as the lecithin in the
method of [Williams] because Taylor [] discloses it as commercially available and also
suitable for administration to human or lower animals.? Examiner? s Answer, page 4.
Appellants point out, however, that Taylor's egg yolk lecithin is distearoyl lecithin, a
synthetic molecule manufactured commercially by hydrogenating egg yolk lecithin (see
page 2, lines 30-31), but the egg PC of the invention "is predominantly 1-palmitoyl, 2-oleyl
PC and 1-palmitoyl, 2-linoleyl PC" (Reply Brief, page 2; and page 9, lines 21-24, of the
specification). According to the specification at page 9, lines 13-17, hydrogenation
(saturation) is a characteristic of PC in aging subjects. The examiner acknowledged and
entered the Reply Brief, but did not respond to this or any other point raised therein. Thus,
it appears that the examiner failed to fully appreciate or address all the requirements of
claim 23. In our view, and in the absence of a fact-based analysis to the contrary,
administration of hydrogenated egg PC does not satisfy those requirements.
35 U.S.C. ? 103 requires that obviousness be determined based on the claimed
subject matter as a whole. Where, as here, the determination of obviousness is based on
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