Appeal No. 2006-3260 Page 3
Application No. 10/384,044
DISCUSSION
Claims 1-12, 14, 16-19, 21-29 and 31-36 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Grebow and Remington’s.
As discussed above, we limit our discussion to representative claims 19 and 33.
The Examiner finds (Answer, page 4), Grebow teaches that Modafinil,
having a particle size of 2 to 60 microns, can be formulated into powders, liquids,
suspension and emulsions and administered topically or orally for the treatment
of, inter alia, narcolepsy. In addition, the Examiner finds (id.), Grebow “teaches
pharmaceutically acceptable carrier[s] that aid solubility . . . can be incorporated
into the Modafinil formulation . . . .”
The Examiner relies on Remington’s to teach, inter alia, nasal
administration of drugs, particle size and that caffeine is “useful as [a] CNS
stimulant that aid[s] [in] staying awake . . . .” Answer, page 5. For the reasons
that follow we find that claims 19 and 33 are prima facie obvious in view of
Grebow. Accordingly, we find it unnecessary to discuss the teachings of
Remington’s.
Claim 19:
As set forth above, claim 19 is drawn to a composition comprising an
aqueous suspension of Modafinil having a particle size of 1 to 10 microns. In our
opinion, the phrase “for nasal administration” (as it appears in claim 19) is a
statement of the intended use of the claimed composition. In this regard, it has
long been held that a claim to an otherwise old composition cannot be
distinguished from the prior art simply by asserting a new use (e.g., nasal
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