Appeal No. 2005-1152
Application No. 10/202,616
upon pulmonary delivery, with or without facilitating intracellular uptake. [But] [e]ven
assuming that this is true, the caselaw [sic] does not support a finding of anticipation
based upon the possibility that a prior art composition possesses a limitation or property
recited in the claims.” Reply Brief, page 2.
More particularly, appellants argue that, “the Examiner relies only upon a broad
generic disclosure of selected components of the prior art to support the rejection. The
broad generic disclosure permits a nearly indefinite number of combinations, which
requires picking and choosing among multiple variables, and does not anticipate the
present claim. Further, reliance on the doctrine of inherency to satisfy the limitation that
the composition possesses a sustained release profile is misplaced.” Reply Brief,
pages 5-6. We agree with appellants that the disclosure of Unger is not an anticipation
of the subject matter of claim 1.
We acknowledge that Unger does broadly disclose that its bioactive agent may
possess any charge including neutral, positive or negative charges. Unger also
specifically discloses that negatively charged bioactive agents are preferred. Col. 9,
lines 50-52.
On the other hand, we agree with appellants that the many variables present
within the disclosure of Unger weaken any alleged prima facie case of anticipation
alleged by the examiner. For example, to meet the limitations of claim 1, the negatively
charged bioactive agent cannot be a nucleic acid. But Unger teaches that the
negatively charged bioactive agent may be selected from proteins, vitamins, steroids,
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