Ex Parte Abrams

Board of Patent Appeals and Interferences

Jul 22, 2011

10372487 (B.P.A.I. Jul. 22, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREW ABRAMS
____________

Appeal 2011-001771
Application 10/372,487
Technology Center 1600
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Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 3-6, 8, and 9.1
We have jurisdiction under 35 U.S.C. § 6(b).

1 Pending claims 10-14 stand withdrawn from consideration (App. Br. 5).
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STATEMENT OF THE CASE
The claims are directed to a method for relieving a symptom of
pulmonary disease in a patient. Claim 1 is representative and is reproduced
below:
1. A method for relieving a symptom of pulmonary disease in a
patient suffering therefrom comprising delivering directly to the patient’s
lungs a systemically effective amount of a non-salt formulation of
furosemide and ethacrynic acid in dry powder form, wherein said
systematically effective amount of a non-salt formulation is delivered as a
fine powder having a particle size of 0.5 - 10 microns.

Claims 1, 3-6, 8, and 9 stand rejected under 35 U.S.C § 103(a) as
unpatentable over the combination of Bianco2 and Pellegata.3
We reverse.
ISSUE
Is the Examiner’s obviousness rejection based on a misreading of both
Bianco and Pellegata?
FACTUAL FINDINGS
FF 1. The Examiner finds that “Bianco discloses the prevention and
treatment of asthma by administering well-known loop diuretics, such as
furosemide and ethacrynic acid (col. 1, lines 13-33)” (Ans. 4).
FF 2. Bianco discloses that loop diuretics such as furosemide and
ethacrynic acid are well-known diuretic agents (id. at ll. 32-35 and 13).
FF 3. Bianco discloses that “[f]urosemide also turned out to be an agent for
preventing or treating asthma” (id. at ll. 27-28).

2 Bianco, US 5,392,767, issued February 28, 1995.
3 Pellegata, US 5,182,300, issued January 26, 1993.
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FF 4. Pellegata discloses that “[i]t has recently been discovered that
furosemide when administered by aerosol to atopic asthmatic patients can
also prevent bronchospasms” when “patients inhaled for 15 to 20 minutes an
aerosol obtained by nebulization of an aqueous solution of 10 mg/ml of the
sodium salt of furosemide” (Pellegata, col. 1, ll. 8-16; see also Ans. 4
(“Pellegata discloses administering furosemide, a well-known diuretic, to
treat asthma via an aerosol obtained by nebulization”)).
FF 5. The Examiner finds that “Pellegata teach[es] that the non-salt forms
of furosemide are effective even though the salt forms offer better
bioavailability (col. 1, line 56 to col[.] 2, line 1)” (Ans. 4).
FF 6. “The salts of . . . [Pellegata’s] invention are more stable from the
physical and chemical point of view, offer a better bioavailability of
furosemide and permit the preparation of spray formulations” (Pellagata, col.
1, l. 55 - col. 2, l. 2).
PRINCIPLES OF LAW
“[T]he [E]xaminer bears the initial burden, on review of the prior art
or on any other ground, of presenting a prima facie case of unpatentability.”
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
ANALYSIS
The Examiner’s obviousness rejection cannot be sustained because it
is based on a misreading of both Bianco and Pellegata.
The Examiner’s finding that “Bianco discloses the prevention and
treatment of asthma by administering well-known loop diuretics, such as
furosemide and ethacrynic acid (col. 1, lines 13-33)” is not accurate (FF 1).
We agree with the Examiner’s finding that Bianco recognizes that both
furosemide and ethacrynic acid are loop diuretics (FF 2). However, contrary
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to the Examiner’s finding, Bianco’s disclosure at col. 1, lines 13-33, only
identifies furosemide as “an agent for preventing or treating asthma” (FF 3).
The Examiner fails to identify an evidentiary basis to support a conclusion
that Bianco suggests that ethacrynic acid is an effective agent for preventing
or treating asthma, or that ethacrynic acid should be combined with
furosemide to treat or prevent asthma.
The Examiner is correct in finding that Pellegata discloses the
administration by nebulization of an aqueous solution of the sodium salt of
furosemide to treat asthma (FF 4). However, the Examiner’s finding that
“Pellegata teach[es] that the non-salt forms of furosemide are effective even
though the salt forms offer better bioavailability (col. 1, line 56 to col[.] 2,
line 1)” is not supported by this record (FF 5). Notwithstanding the
Examiner’s assertion to the contrary, the cited portion of Pellegata discloses
that “[t]he salts of . . . [Pellegata’s] invention are more stable from the
physical and chemical point of view, offer a better bioavailability of
furosemide and permit the preparation of spray formulations” (FF 6).
Contrary to the Examiner’s finding, the cited portion of Pellegata does not
address the effect of a non-salt form of furosemide on the treatment or
prevention of asthma (see also Reply Br. 4 (where, in response to the
Examiner’s finding, Appellant contends that “this is not exactly what
Pellegata teaches”)).
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CONCLUSION OF LAW
The Examiner’s obviousness rejection is based on a misreading of
both Bianco and Pellegata. Accordingly, the rejection of claims 1, 3-6, 8,
and 9 under 35 U.S.C § 103(a) as unpatentable over the combination of
Bianco and Pellegata cannot be sustained and is therefore reversed.

REVERSED

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