10149695 (B.P.A.I. Aug. 27, 2010)

Ex Parte Auzerie

Board of Patent Appeals and InterferencesAug 27, 2010

10149695 (B.P.A.I. Aug. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte JACK AUZERIE __________ Appeal 2009-015159 Application 10/149,695 Technology Center 1600 __________ Before ERIC GRIMES, RICHARD M. LEBOVITZ, and MELANIE L. McCOLLUM, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal under 35 U.S.C. § 134 involving claims to a gel composition for the treatment of mucosa. The Examiner has rejected the 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-015159 Application 10/149,695 2 claims as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claims 1, 2, and 4-23 are on appeal. Claim 1 is representative and reads as follows: 1. A gel composition for the treatment of mucosa with an active principle, comprising: at least one poloxamer, ethylene and propylene oxide copolymer, constituting a thermoreversible gel, at least one carbomer which constitutes a bioadhesive product, at least one cellulosic derivative, and at least one active principle in solution or in suspension. The claims stand rejected as follows: • Claims 1, 2, 4-6, 8, 10-14, 16, 17, 19, and 21-23 under 35 U.S.C. §102(b) in view of Resman;2 and • Claims 1, 2, and 4-23 under 35 U.S.C. §103(a) in view of Resman and Yiv.3 I. Issue The Examiner has rejected claims 1, 2, 4-6, 8, 10, 11-14, 16, 17, 19, and 21-23 as being anticipated by Resman. The Examiner finds that Resman discloses “a thermoreversible gel as a liquid pharmaceutical carrier” (Ans. 3), which comprises a poloxamer, a carbomer, a cellulosic derivative, and an active agent (id.). 2 Resman et al., EP Patent Application 0551626 A1, July 21, 1993 3 Yiv et al., US Patent Application 2003/0083314 A1, May 1, 2003 Appeal 2009-015159 Application 10/149,695 3 Appellant contends that the Examiner erred in finding that Resman anticipates claim 1 because Resman “does not disclose or suggest a gel composition comprising a poloxamer, carbomer, active principle, and cellulosic derivative” (Appeal Br. 5). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s finding that Resman discloses a composition meeting all the limitations of claim 1? Findings of Fact 1. Resman discloses a “thermoreversible gel as a liquid pharmaceutical carrier for application of active substances onto skin, eye or mucous membranes” (Resman 5: 18-20). 2. Resman discloses that by adding 0.01% to 5% of a carbomer to 10 to 30 wt.% aqueous poloxamer solutions a reduction of sol viscosity at temperatures under the gelling temperatures and a high increase of gel viscosity at room temperature … are achieved. In this way the physico-chemical characteristics of a thermoreversible gel in the range of physiological applicability as well as at a pH value between 4 and 9 may be regulated effectively and rapidly. (Id. at 5: 22-27.) 3. Resman compares the thermo-rheological properties of compositions comprising a poloxamer (Composition A1, comprising Pluronic F 127), a poloxamer and a cellulosic derivative (Composition A7, comprising Pluronic F 127 and Methocel E4), and a poloxamer and a carbomer (Composition A11, comprising Pluronic F 127 and Carbopol 934P). (Id. at 6, Table I.) Appeal 2009-015159 Application 10/149,695 4 Principles of Law An anticipatory reference under 35 U.S.C. § 102 “must clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference” In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Analysis Claim 1 is directed to a gel composition comprising a poloxamer, a carbomer, a cellulosic derivative, and an active principle. Appellant argues that Resman “does not disclose or suggest a gel composition comprising a poloxamer, carbomer, active principle, and cellulosic derivative” (Appeal Br. 5), and that “[w]hile it is true that the RESMAN publication discloses a cellulosic derivative (i.e., Methocel E4 in Table 1 on pg. 6), this cellulosic derivative is not in combination with the other components recited in the claimed invention” (id. at 5). Appellant’s arguments are persuasive that the Examiner has not shown that Resman discloses a composition comprising all of the components required by claim 1. Resman discloses compositions comprising a poloxamer and a carbomer, or a poloxamer and cellulosic derivative, but does not disclose a composition comprising a poloxamer, a carbomer, and a cellulosic derivative. Resman could be found to disclose the composition of claim 1 only by combining components of different compositions, and such picking and choosing is not permitted in the context of anticipation. See In re Arkley, 455 F.2d at 587. Appeal 2009-015159 Application 10/149,695 5 Independent claims 10 and 19 also require the combination of a poloxamer, a carbomer, a cellulosic derivative, and an active principle. Claims 2, 4-6, 8, 11-14, 16, 17, and 21-23 depend on claim 1 or claim 10. Thus, the rejection of claims 1, 2, 4-6, 8, 10, 11-14, 16, 17, 19, and 21-23 as being anticipated by Resman is reversed. Conclusion of Law The evidence of record does not support the Examiner’s finding that Resman discloses a composition meeting all the limitations of the rejected claims. II. The Examiner has rejected claims 1, 2, and 4-23 as being obvious in view of Resman and Yiv. The Examiner relies on Resman as discussed above (Ans. 4). The Examiner additionally finds that Resman and Yiv suggest limitations of the dependent claims (id. at 4-5). However, as discussed above, Resman does not disclose the composition of the independent claims on appeal. The Examiner has not provided any reason a person of ordinary skill in the art would have considered it obvious to combine the components of the different compositions disclosed by Resman, and therefore has not set out a prima facie case that Resman would have suggested the claimed composition. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (An invention “composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.… [I]t can be important to identify a reason that would have Appeal 2009-015159 Application 10/149,695 6 prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). SUMMARY We reverse the rejection of claims 1, 2, 4-6, 8, 10-14, 16, 17, 19, and 21-23 under 35 U.S.C. §102(b) and the rejection of claims 1, 2 and 4-23 under 35 U.S.C. §103(a). REVERSED lp YOUNG & THOMPSON 209 MADISON STREET SUITE 500 ALEXANDRIA VA 22314