Appeal No. 2005-0416 Page 5
Application No. 09/970,020
seek out an alternative to the disclosed HPMC controlled release excipients for
making a two-part formulation.”
It is well settled that the suggestion to combine prior art references must
come from the cited references, not from the application’s disclosure. See e.g.,
In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988). As we understand appellants’ argument, since Gilbert teaches the use of
HPMC, there would have been no reason, other than hindsight reconstruction4, to
modify the teachings of Gilbert to use the sustained release excipients of
Baichwal. We disagree. Baichwal recognizes the disadvantages of using HPMC
as a slow release matrix for a variety of medicaments. See e.g., Baichwal,
column 2, line 34 – column 3, line 45.
Specifically, Baichwal disclose (column 2, lines 34-38), “a great deal of
attention in the pharmaceutical field has turned to the use of various hydrocolloid
materials such as hydroxypropylmethyl cellulose in providing a slow release
matrix for a variety of medicaments.” Baichwal provides two examples of slow
release compositions containing HPMC. See Baichwal’s discussion of the Schor
and Alderman patents at column 2, line 39 – column 3, line 7. According to
Baichwal, (column 3, lines 8-22),
[t]he carrier bases which provide the slow release profiles in these
disclosures can only be compressed into a tablet or a solid dosage
form with the aid of other conventional tableting adjuvants such as
binders and the like, and therefore contribute only to the slow
release aspect of the final solid unit dosage form and not to the
tableting aspects. In other words, in each of these disclosures it is
necessary for [sic] to first determine the physical properties of the
active medicament to be tableted and thereafter proceed through a
series of trial and error experiments in order to determine the
4 See Brief, bridging paragraph, pages 6-7; Reply Brief, bridging paragraph, pages 4-5.
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