Appeal No. 2003-1428 Page 5
Application No. 09/468,777
With respect to Nakamura and Dubief, Appellants argue that the
compositions taught by those references as present as an emulsion, in which the
lipid exists as an anisotropic crystal phase in conjunction with the surfactant.
See Appeal Brief, pages 4-8. Thus, in the compositions taught by the Nakamura
and Dubief, the lipid and surfactant are melted together to form a new liquid
crystal phase: In contrast, appellants assert that in the claimed composition the
amphipathic lipid is present as a solid particulate which is dispersed in the
surfactant, and if present, the aqueous phase. See id.
With respect to the rejection over Pillai, appellants argue that the
“reference fails to disclose or suggest solid particles of amphipathic lipid in any
context, the reference can not suggest a dispersion in which the amphipathic lipid
is a solid particulate and dispersed in a surfactant and aqueous medium.” Id. at
9.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993) (citations omitted). The test of obviousness is “whether the teachings of
the prior art, taken as a whole, would have made obvious the claimed invention.”
In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
We agree that the combinations based on Nakamura and Dubief do not
teach a composition, “wherein said amphipathic lipid has an average particle size
of 0.5 to 150 µm as a solid particulate,” see claim 11, or a composition
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