Appeal No. 2006-0762 Page 6
Application No. 09/982,113
As to claims 139 and 140, as recognized by the examiner, although Mehta
does not specifically teach the amount of water in the liposomal composition, one
of ordinary skill in the art would have discovered the optimum range of the
amount of the water in the claimed compositions by routine experimentation.
See In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980)
(“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.” (citations omitted)); see also In re
Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
Note that the percentages of water recited in claims 139 and 140 refer to the
overall composition, and do not limit the amount of water present in the lipid
material.
Appellants assert that Ulukaya actually teaches away from the
combination, as that reference teaches that 4-HR “apparently exerts its clinical
effects by a different pathway from classical retinoids, . . . which immediately
brings into question whether one of ordinary skill would have an expectation that
this very different retinoid could be practiced in the context of the teachings of
Mehta. We think not.” Appeal Brief, page 7. Moreover, appellants assert with
the advantages of 4-HR described by Ulukaya, one of ordinary skill would not
have been motivated to further modify it in any way. Id.
Mehta teaches that retinoids may be used in the treatment of cancer. See
Col. 1, lines 25-54. The reference teaches that not only does the liposome
reduce the toxicity of the retinoid, the use of liposomes also allow for direct
delivery to intracellular sites, circumventing the need for a cell membrane
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