Appeal No. 2006-3313
Application No. 10/423,920
of Chien are first incorporated into a mucilage (paste), within the definition of appellants’
gel. Chien, col. 7, lines 19-20; col. 9, line 50 to col. 10, line 4.
Appellants respond to the examiner's prima facie case, arguing that “Chien
provides no disclosure or suggestion that benzocaine (or any other local anesthetic or
treating agent) should be in ionic form as required by the claims of the present
invention. Therefore, one skilled in the art would understand that it is in the non-ionic
free base form, as would usually be the form used. There is nothing in Chien to
motivate one to use the ionic form instead.” Brief, page 5.
In response to appellants’ arguments, the examiner indicates that in Example 1
of Chien (col. 9, line 67- col. 10, line 3) a stock solution of benzocaine is made in
preparing the composition. “Therefore, CHIEN’s benzocaine would inherently be in
ionic form when in solution.” Answer, page 8. The examiner concludes that benzocaine
is in ionic form when dissolved in water or alcohol. Answer, page 8. While appellants
argue that “benzocaine does not ionize in methanol solution” (Reply Brief, page 2),
appellants have not provided any evidence to support this argument. Moreover, the
muclilage mixture of Chien also includes water. Col. 7, lines 19-30 and col. 9, line 50-
col. 10, line 14.
Appellants have not rebutted the examiner’s argument that Chien’s disclosure of
benzocaine in water would have included benzocaine in ionic form. Moreover, the
specification, page 9, lists benzocaine as a cationic treating agent, supporting the
examiner’s position that benzocaine is ionized, at least in aqueous media, (e.g. in the
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