Appeal No. 2003-0816
Application No. 09/693,254
core. (Col. 2, ll. 5-8). Thus, the composition of Conte has at least two differences
from the claimed invention. First, the matrix core of Conte swells when contacted
with an aqueous liquid. Second, the support coating of Conte remains intact until
complete release of the active substance from the core.
WO ‘066 describes a composition that contains an active substance in a
matrix core. The matrix is characterized as eroding on contact with aqueous liquids.
We agree with Appellant, Brief pages 7-9, that there is no motivation to
combine the teachings of Conte and WO ‘066 and if the combination were made as
proposed by the Examiner the result would not have been the claimed invention. A
person of ordinary skill in the art would have no motivation to replace the swellable
matrix of Conte with an eroding matrix described by WO ‘066. Moreover, even if
such a substitution were made, the result would have been a composite that had an
eroding matrix and a support that would have remained intact until after the matrix
has eroded to deliver the active substance.
The record indicates that the motivation relied upon by the Examiner
suggesting the combination of Conte, WO ‘066 and Banker came from the
Appellant’s description of their invention in the specification rather than coming
from the applied prior art and that, therefore, the Examiner used impermissible
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