Appeal No. 2006-3260 Page 6
Application No. 10/384,044
to a mammal by nasal delivery has absolutely no basis in the cited art.” As set
forth above, claim 19 is drawn to a composition comprising Modafinil having a
particle size of 1 to 10 microns. The phrase “for nasal administration” is merely a
statement of the intended use of this composition. Accordingly, we are not
persuaded by Appellants’ assertions regarding “nasal administration”. For the
same reasons we are not persuaded by the Lawyer Declaration which addresses
the nasal administration of Modafinil.3
On reflection, we find no error in the Examiner’s prima facie case of
obviousness. Accordingly, we affirm the rejection of claim 19 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Grebow and Remington’s.
As discussed above, claims 1-12, 14, 16, 21-29, 31, 32, 35 and 56 fall together
with claim 19.
Claim 33:
Claim 33 depends from and further limits the composition of claim 19 to
further include a solubility enhancer. According to Appellants’ specification
(page 8), “[s]ince Modafinil is practically insoluble in water and only slightly
soluble in lower alcohols, solubility enhancers such as caffeine and/or dextrose
may be included.” There can be no doubt that caffeine and dextrose as recited in
Appellants’ specification are examples of “solubility enhancers”. Claim 33, before
3 In addition, we note that the Lawyer Declaration does not provide a comparison of the
composition comprising the claimed particle with the composition set forth in Grebow.
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