Appeal No. 2001-1933
Application No. 08/940,058
However, as pointed out by appellants, another important difference between the
composition of the Leonard and the claimed composition, is that the composition of
Leonard is a liquid. Reply Brief, page 9.
The examiner further argues that, “It is known in the art that amorphous solids
will in general be better absorbed than will crystalline ones (see Lieberman et al. P.
463), and the solid dispersion process i.e. spray-drying, will alter a crystalline form of a
compound to an amorphous state (see Kai abst, Matsuda p. 627).” Answer, page 4.
The examiner concludes (Id.):
Therefore, one having ordinary skill in the pharmaceutical formulation art
would be motivated to employ a spray-drying process of paroxetine
hydrochloride crystals of the prior art in solid formulation since it is
conventionally taught that spray-drying is expect[ed] to give a better
absorbed amorphous state of the drug.
To establish a prima facie case of obviousness, the examiner must show "some
objective teaching in the prior art or that knowledge generally available to one of
ordinary skill in the art would lead that individual to combine the relevant teachings of
the references." In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). There is no suggestion to combine, however, if a reference teaches away from
its combination with another source. See, id. at 1075, 5 USPQ2d at 1599. "A
reference may be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the applicant . . .
[or] if it suggests that the line of development flowing from the reference's disclosure is
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