Appeal No. 2003-1765 Page 2
Application No. 09/319,735
the excipient does not enhance transdermal or transmucosal transmission of the
opioid analgesic agent,
with the proviso that, when the admixture is a liquid, it further comprises a
component that is pharmaceutically unacceptable for parenteral administration,
wherein said opioid is cyclazocone, piperidine, piperazine, pyrrolidine,
morphiceptin, meperidine, trifluadom, benzeneacetamine, diacylacetamide,
benzomorphan, hydromorphone, oxymorphone, levophanol, methadone, meperidine,
fentanyl, codeine, hydrocodone, oxycodone, propoxyphene, buprenorphine,
butorphanol, pentazocine or nalbuphine.
The sole reference relied on by the examiner is:
MacLean GB 2 287 404 Sep. 20, 1995
Claims 8, 9 and 11-14 stand rejected under 35 U.S.C. § 102(b) as anticipated by
MacLean, while claims 1-3, 5-9 and 11-22 stand rejected under 35 U.S.C. § 103 as
unpatentable over MacLean.
We reverse these rejections. In addition, we raise an additional issue for the
examiner’s and appellants’ consideration.
DISCUSSION
Anticipation
“[E]very limitation of a claim must identically appear in a single prior art reference
for it to anticipate the claim.” Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d
1030, 1032 (Fed. Cir. 1997). Moreover, “the Patent Office has the initial burden of
coming forward with some sort of evidence tending to disprove novelty.” In re Wilder,
429 F.2d 447, 450, 166 USPQ2d 545, 548 (CCPA 1970).
MacLean describes compositions for treating inflammatory diseases and pain,
comprising combinations of substance P receptor antagonists and anti-
inflammatory/analgesic compounds, some of which compounds, e.g., codeine and
fentanyl, are opioid analgesics.
Claims 8, 9 and 11-14 stand rejected under 35 U.S.C. § 102(b) as anticipated by
MacLean. The claims are directed to a composition comprising a mixture of an opioid
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