Appeal No. 2001-1933
Application No. 08/940,058
As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629, (Fed. Cir. 1996) (citation omitted):
It is well-established that before a conclusion of obviousness may be
made based on a combination of references, there must have been a
reason, suggestion, or motivation to lead an inventor to combine those
references.
In the present case, we find the examiner has failed to provide sufficient evidence of
motivation for combination of the cited references in view of the teaching in the art away
from amorphous forms of paroxetine compounds due to their hydroscopicity and
instability. This rejection is reversed.
II. and III. 35 U.S.C. § 103(a)
Claims 1, 15, 16 and 32 stand rejected under 35 U.S.C. § 103(a) as obvious over
Jacewicz in view of Lieberman, Kai or Matsuda.
Claims 1 - 37 stand rejected under 35 U.S.C. § 103(a) as obvious over Leonard,
Jacewicz, Barnes, Pathak in view of Lieberman, Kai or Matsuda in further view of Lin,
Traue, Uekama, Byron, Ares, Francese, Damani, or Tovey.
According to the examiner, Jacewicz describes a crystalline form of paroxetine
hydrochloride. The examiner argues that it is known in the art that a solid dispersion
process, spray drying will alter a crystalline form of a compound to an amorphous state,
citing Kai and Matsuda. The examiner concludes that ?one of ordinary skill in the
pharmaceutical formulation art would be motivated to employ a spray drying process of
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