Appeal No. 2006-0251 Page 5
Application No. 10/017,697
While White discloses both liquid (column 7, line 47 – column 8, line 12),
and soft gelatin capsule (column 8, line 13 – line 10, line 3) formulations4, White
discloses (column 1, lines 26-29, emphasis added), “[s]oft gelatin capsules are a
preferred dosage form for accurately dispensing liquids, offering a simple means
of masking the unpleasant taste and aromas of many pharmaceutically
acceptable actives.” We find, and the examiner identifies, no teaching in White
of a taste-masked liquid pharmaceutical composition. Accordingly, it appears the
examiner is relying on the principles of inherency to reach appellants’ claim the
limitation that the final form of the taste-masked pharmaceutical composition is a
liquid.
However, as set forth in In re Robertson, 169 F.3d 743, 745, 49 USPQ2d
1949, 1950-51 (Fed. Cir. 1999) (citations omitted) “[t]o establish inherency, the
extrinsic evidence ‘must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would be
so recognized by persons of ordinary skill. Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not sufficient.’” As we
understand the examiner’s reasoning at page 10 of the Answer, since White
discloses a composition that comprises pyrrolidone and a high MW polyethylene
glycol, White’s composition will, like appellants’ composition, result in a taste-
4 In this regard, we note that White exemplifies several liquid pharmaceutical formulations that
are “suitable for oral administration, and encapsulation within soft gelatin shells.” See Examples
I, III-V, VII, and VIII. Example VIII, however, is the only example that contains a drug,
polyethylene glycol, polyvinylpyrrolidone, and a tri ester. Accordingly, we find White’s Example
VIII to be the closest to appellants’ claimed invention.
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