Appeal No. 2006-3260 Page 5
Application No. 10/384,044
Therefore, in our opinion, Grebow teaches a composition comprising an
aqueous suspension of Modafinil having a particle size of 2 to 60 microns, and
therefore renders obvious Appellants’ narrower claim 19.
Emphasizing the nasal route of administration, Appellants assert (Brief,
bridging sentence, pages 6-7) that their “invention is fundamentally different from
Grebow et al., i.e. operates through a different absorption mechanism, at a
particle size range (1 to 10 microns) significantly below the preferred ranges
taught by Grebow et al.” We do not find this argument persuasive.
As discussed above, we find the phrase “for nasal administration” to be a
statement of intended use which is insufficient to distinguish the claimed
composition from the Modafinil composition taught by Grebow. Regarding
Appellants’ reference to the preferred ranges taught by Grebow, we note that for
an obviousness analysis, the fact that “a specific embodiment is taught to be
preferred is not controlling, since all disclosures of the prior art, including
unpreferred embodiments, must be considered.” Merck & Co., Inc. v. Biocraft
Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989) (internal
quotations and alterations omitted). On this record, Appellants admit that their
particle size range overlaps the range disclosed in the prior art. Brief, page 6.
Accordingly, we do not find Appellants’ focus on the preferred particle size
ranges taught by Grebow persuasive.
We are also not persuaded by Appellants’ assertion of unexpected results.
See Brief, page 9, “the surprising and unexpected discovery that a
therapeutically effective amount of Modafinil could successfully be administered
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