Appeal 2007-0851
Application 10/385,213
microns (id. at col. 5, ll. 63-67). Thus, we find that Chien describes droplets
of from 10 to 200 microns, which is within the size range recited in claim 3.
Appellants argue that nothing in Chien and Pfister “suggests their
combination in the manner proposed by the Examiner” (Br. 15). Because
we are not relying on Pfister for the features of claim 3, we are not
persuaded by this argument.
We conclude that there is a prima facie case that claim 3 would have
been obvious in view of Chien, Pfister, Powell, and Webster’s Dictionary,
which Appellants have not rebutted. We therefore affirm the rejection of
claim 3 under 35 U.S.C. § 103. Claims 4-10 fall with claim 3. Because our
reasoning differs from that of the Examiner, we designate our affirmance of
the obviousness rejection of claims 3-10 as a new ground of rejection in
order to give Appellants a fair opportunity to respond.
Claim 22 depends from claim 1 and requires that the hydrophilic
component include polyvinyl alcohol (PVA) or polyvinylpyrrolidone (PVP).
The Examiner relies on Chien for teaching that “the hydrophilic solvent
comprises water and ‘water miscible solvents which increase the aqueous
solubility of the pharmaceutical’” and that “[g]lycols such as polyethylene
glycol, propylene glycol, butylene glycol, glycerol formal, and glycofurol
are suitable solvents” (Answer 12-13). The Examiner argues that “the
choice of hydrophilic solvent is an optimizable parameter that depends on
the active agent. PVA is an organic polyol, as are the glycols recited by
Chien et al. Because PVA is miscible in water and is similar in structure to
the preferred glycols of Chien,” there would have been “a reasonable
expectation of success in substituting one for the other.” (Id. at 13.)
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