Appeal 2007-3734
Application 11/286,137
Appellants argue that Chiu cannot be relied upon to overcome the
deficiencies of Baker and Newman (Br. 9-11). However, because we do not
find it necessary to rely on Chiu, we are not persuaded by these arguments.1
Appellants also argue that “the potential toxicity of
14-hydroxycodeinone would teach one skilled in the art away from
providing oral dosage forms comprising oxycodone, ibuprofen, and
14-hydroxycodeinone” (Br. 11). Because we find that Baker and Newman
anticipate claim 1, we are not persuaded by this argument. “[T]he question
whether a reference ‘teaches away’ from the invention is inapplicable to an
anticipation analysis.” Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150
F.3d 1354, 1361 (Fed. Cir. 1998).
In addition, Appellants argue that “the present inventors have
unexpectedly found that oral dosage forms comprising oxycodone, ibuprofen
and 14-hydroxycodeinone may be used for the management of pain”
(Br. 12). Because we find that Baker and Newman anticipate claim 1, we
are not persuaded by this argument. “Mere recognition of latent properties
in the prior art does not render nonobvious an otherwise known invention.”
In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
1 As pointed out by Appellants (Br. 9), Chiu states that “[t]he disappearance
of 14-hydroxycodeinone was determined” (Chui, col. 15, l. 62, to col. 16,
l. 1). However, we do not find that this statement provides sufficient
evidence to overcome the position that oxycodone hydrochloride inherently
contains 14-hydroxycodeinone. As pointed out by the Examiner, Chiu
“monitors the presence of 14-hydroxycodeinone to the extent it is detectable
by HPLC to ascertain reaction completeness” (Answer 12). Chiu does not
claim that all of the 14-hydroxycodeinone is converted to oxycodone.
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