Appeal No. 2006-3260 Page 4
Application No. 10/384,044
administration) for the composition. See e.g., In re Pearson, 494 F.2d 1399,
1403, 181 USPQ 641, 644 (CCPA 1974) (“terms [that] merely set forth the
intended use for ... an otherwise old composition ... do not differentiate the
claimed composition from those known to the prior art.”). Accordingly, we
construe claim 19 to read on a composition comprising an aqueous suspension
of Modafinil having a particle size of 1 to 10 microns. Therefore, we disagree
with Appellants’ intimation (Brief, page 9) that claim 19 is distinguished over the
art because it “deal[s] with [a] previously undisclosed delivery route of a particular
therapeutic compound, Modafinil . . . .”
As discussed above, Grebow teaches a composition comprising Modafinil
having a particle size of 2 to 60 microns. Grebow, page 4, lines 24-28.
Appellants admit that the Modafinil particle size taught by Grebow overlaps the
claimed particle range. See Brief, page 6, wherein Appellants assert “Grebow et
al. does mention broadly a particle size range of 2 to 60 microns, which
admittedly overlaps with Appellants’ claimed particle range. . . .” A prima facie
case of obviousness exists where the claimed ranges overlap or lie inside ranges
disclosed by the prior art. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA
1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In addition, Grebow teaches that such a Modafinil composition can be
formulated into a liquid/suspension – e.g., an aqueous suspension. Grebow,
page 19, lines 10-13 and page 15, lines 10-26. Appellants do not dispute this
teaching of Grebow.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: September 9, 2013