Appeal No. 2006-0182
Application No. 10/254,862
of an oily substance[,] . . . a basic substance . . . water (50-90% at col. 3, line 10), a
hydrophilic polymer (e.g. carboxyvinyl polymer at column 3, lines 20-32)…” Answer,
page 4.
The examiner argues that appellants’ claims differ from Miyata in that they
require a specific solvent such as ethanol, isopropanol, or diethylene glycol monoethyl
ether.
The examiner concludes that (Answer, pages 4-5)
it would have been obvious to one of ordinary skill in the art to substitute
the oily substances (taught in [Miyata]…) with ethanol, isopropanol or
diethylene glycol monoethyl ether (required by instant claims) at the time
the invention was made . . . because [Jain] US'609 teaches that the
solvents (required by instant claims) such as lower alcohols (e.g, ethanol
or isopropanol) or diethylene glycol monoethyl ether (transcutol®) and the
vehicles (taught in US ‘735) such as propylene glycol, glycerol (=1 ,2,3-
propanetriol), are functionally equivalent to each other wherein they are
acting as a solubilizing agent for nimesulide. . . . It is readily apparent to
one of ordinary skill in the art that the substitution would not alter the
solubilizing activity significantly. One would have been motivated to make
such substitution with reasonable expectation of success, because such
substitution (well known solvents) is conventional knowledge and
commonly practiced in the cosmetic/pharmaceutical field. One would
have been motivated to do so, with reasonable expectation of success
because such substitution could result in cost-effective manufacturing
process because lower alcohols are easy to obtain. . . . The techniques
and skills required for making such substitution is conventional knowledge
or well within the skills of ordinary artisan as evidenced by these cited
reference.
We do not find that the examiner has provided sufficient evidence to support a
prima facie case of obviousness. Appellants argue that the combination of Miyata with
Jain is without motivation. We agree. In particular, appellants argue (Brief, page 9)
3
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007