Appeal No. 2006-0274
Application No. 09/415,890
for the first time. (col. 4, lines 54-56). Janoff does refer to an alternative
where the aqueous solvent is added prior to evaporation of the solvent
(col. 4, lines 56-58), however, here it is stated that only the solvent is
removed ("...evaporation of the solvent") and there is no teaching to
undertake the addition of a pharmaceutically acceptable aqueous solvent.
We agree with appellants that the examiner has failed to set forth a prima facie
case of anticipation. We agree with the examiner that Janoff describes adding the
aqueous solution prior to evaporation of the solvent, at column 4, lines 56, which states,
“[a]lternatively, the aqueous solution may be added to the solvent-containing drug and
lipid phase prior to evaporation of the solvent.” [Emphasis added.] See also Answer,
page 4. However, upon further review of the passage in Janoff relied upon by the
examiner as evidence of anticipation, it would appear that the solvent is evaporated
(column 4, line 58), however the fate of the aqueous solution remains unclear. In our
view the examiner has not pointed to specific evidence within the disclosure of Janoff to
meet the claim limitation, “(c) removing more than 50% of the dipolar aprotic solvent
and/or acid and aqueous secondary solvent.”
Thus, we do not find the examiner has established a prima facie case of
anticipation upon sufficient evidence. The rejection of claims for anticipation over Janoff
is reversed.
Obviousness
II. Claims 97, 99, 116, 117, 119, and 133 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Janoff in view of Szoka.
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