Appeal No. 2006-2213 Page 10
Application No. 09/771,151
the specification as being “preferably” used to entrap supersaturated drug solutions.
Specification, page 8, lines 13-14 (“Typically, liposomes having a size of between 60-
1,000 nm are suitable, preferably a size of between about 70-500 nm.”). (Emphasis
added.) As also discussed above, the liposomes disclosed at page 12 of Abra contain
exactly the same concentration of entrapped cisplatin, 8.5 mg/ml in 0.9% sodium
chloride, as is present in the liposomes prepared in Example 1 of Appellants’
specification. Thus, because the liposomes described on page 12 of Abra are the same
as the liposomes demonstrated by Appellants’ own disclosure to contain dissolved
rather than precipitated cisplatin, we conclude that the liposomes prepared as described
on page 12 of Abra would not contain precipitated cisplatin.
To summarize, the fact that Appellants may have discovered an unrecognized
result of an old process does not entitle them to claims to the old process. Despite
Abra’s failure to disclose the relationship between liposome size and the ability to
maintain supersaturated solutions in the dissolved state under ambient conditions,
based on the evidence before us, Abra in fact produced the same product recited in the
claims, using the claimed process steps. Therefore, because a preponderance of the
evidence supports the examiner’s holding that the process steps and the product made
by those steps are the same as disclosed in the prior art, we affirm the rejection.
Summary
Because Abra describes a process having all of the steps recited in claims 1 and
16, we find no error in the examiner’s anticipation rejection. We therefore affirm the
examiner’s rejection of claims 1, 3-9, and 16, over Abra. The examiner also rejected
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