Appeal 2007-1073
Application 10/308,176
Appellants succinctly argue
It is clear that Barbier [] used α-tocopherol as an antioxidant
and not as a surfactant in the composition of Example B as the
α-tocopherol is present at a level of 0.01% by weight (column
24, lines 32-39), a level that is too low to be useful as a
surfactant but typically used for an antioxidant. Thus, one of
ordinary skill in the art would not think to replace the α-
tocopherol in Example B with a surfactant, even a surfactant
that has a tocopherol moiety in it. Second, Barbier [], list PEG
as one of a laundry list of possible components in an oral
dosage form and do not disclose compositions comprising a
solubilizer such as MIGLYOL 812 with PEG. In fact, Barbier
[] do not disclose any specific compositions comprising PEG.
Thus, no motivation is provided to replace PEG with tocopherol
PEG-1000 succinate. Moreover, even assuming, arguendo, that
one would replace PEG with tocopherol PEG-1000 succinate,
there is no direction in Barbier [] to combine MIGLYOL 812
and tocopherol PEG-1000 succinate in the form of a
composition comprising about 50% of each. (Br. 22.)
The legal conclusion of unpatentability for obviousness depends on
four factual inquiries identified by Graham v. John Deere Co., 383 U.S. 1,
148 USPQ 459 (1966). These inquiries concern: (1) the scope and content of
the prior art; (2) the level of ordinary skill in the art; (3) the differences
between the claimed invention and the prior art; and (4) secondary
considerations of nonobviousness. Against this background, the
obviousness or nonobviousness of the subject matter is determined. KSR
Int’l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385, 1388 (2007).
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