Appeal No. 2004-0378
Application No. 09/765,675
one composition within the scope of claim 23, the claimed composition is unpatentable
under 35 U.S.C. § 103.
This reasoning also compels affirmance of the rejection with respect to claims
24-27, which further limit the anionic lipids enumerated in claim 23, but do not further
limit the claim with respect to cationic lipids. Further, the compositions of claims 28 and
29 would have been obvious in view of Restle and Ziegler, since Ziegler teaches that
the quaternary ammonium functionalized phosphate ester (i.e., the cationic amphiphilic
lipid) should be present in an amount ranging from 0.1 to 30%. Column 2, lines 3-7.
Since the range disclosed in the prior art overlaps the range recited in claims 28 and 29,
the claimed compositions would have been prima facie obvious. See In re Woodruff,
919 F. 2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) (“The law is replete with
cases in which the difference between the claimed invention and the prior art is some
range or other variable within the claims. These cases have consistently held that in
such a situation, the applicant must show that the particular range is critical, generally
by showing that the claimed range achieves unexpected results relative to the prior art
range.”) (citations omitted, emphasis in original).
However, we will reverse the rejection as applied to claim 63, which requires a
composition having a turbidity within a specific range. The specification discloses that
the recited turbidity is characteristic of a composition “hav[ing] a transparent to blueish
[sic] appearance.” Page 44. Restle and Ziegler do not discuss the transparency or
turbidity of the disclosed compositions and therefore would not have led those skilled in
the art to expect that the composition resulting from their combination would have the
recited property.
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