Appeal No. 2006-3260 Page 7
Application No. 10/384,044
us on appeal, does not require a specific “solubility enhancer,” but instead is
open to include more than caffeine and dextrose.4
As discussed above, Grebow teaches a composition comprising an
aqueous suspension of Modfinil having a particle size of 2 to 60 microns.
According to Grebow, this composition “may comprise agents that aid
solubility . . . .” Grebow, page 19, lines 15-16.5 Accordingly, we find that Grebow
teaches a composition comprising an aqueous suspension of Modfinil having a
particle size of 2 to 60 microns and further comprising a solubility enhancer.
Therefore we find that Grebow renders the composition set forth in Appellants’
claim 33 prima facie obvious to a person of ordinary skill in the art at the time the
invention was made.
For their part, Appellants focus attention on nasal administration and
caffeine asserting, inter alia, (Brief, page 10), “one skilled in the art would not be
motivated to combine caffeine with Modafinil for nasal administration.” Claim 33
is not limited to a solubility enhancer that is caffeine, and nasal administration is
merely the intended use of the composition. Accordingly, we do not find
Appellants’ arguments persuasive.
On reflection, we find no error in the Examiner’s prima facie case of
obviousness. Having found all the limitations of Appellants’ claim 33 in Grebow,
we do not address Remington’s, which addresses, inter alia, caffeine.
4 In this regard, we note that claim 34 depends from and further limits the solubility enhancer of
claim 33 to caffeine or dextrose.
5 See also, Answer, page 4, wherein the Examiner finds that “Grebow also teaches
pharmaceutically acceptable carrier[s] that aid solubility . . . can be incorporated into the Modafinil
formulation . . . .”
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