Ex Parte DoneyDownload PDFPatent Trials and Appeals BoardMay 30, 201911495993 - (D) (P.T.A.B. May. 30, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 11/495,993 07/28/2006 John Alfred Doney 7590 05/31/2019 International Specialty Products Attn: William J. Davis, Esq. Legal Department, Bldg, 8 1361 Alps Road Waynes, NJ 07470 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 2919 2450 EXAMINER SHIN, MONICA A ART UNIT PAPER NUMBER 1616 MAIL DATE DELIVERY MODE 05/31/2019 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN ALFRED DONEY1 Appeal2017-008318 Application 11/495,993 Technology Center 1600 Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and JOHN G. NEW, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This appeal involves claims directed to methods for preparing spray dried compositions. The Examiner rejected the claims under 35 U.S.C. § 103 as obvious. Pursuant to 35 U.S.C. § 134, Appellant appeals the Examiner's determination that the claims are unpatentable. We have jurisdiction for the appeal under 35 U.S.C. § 6(b). The Examiner's decision is reversed. 1 The Appeal Brief ("Appeal Br." entered Dec. 1, 2016) lists ISP Investments Inc. as the real party in interest. Appeal Br. 2. Appeal2017-008318 Application 11/495,993 STATEMENT OF THE CASE The claims stand finally rejected by the Examiner as follows: 1. Claims 1, 7, 8, 13-15, 18-20, 22-28, and 40 under 35 U.S.C. § I03(a) as obvious in view of Yuk et al. (WO 00/40220, published July 13, 2000) ("Yuk"), Jirgensons (Solubility and Fractionation of Polyvinylpyrrolidone, VIII J. of Poly. Sci. 519-27 (1952)) ("Jirgensons"), Dang et al. (US 2002/0045668 Al, April 18, 2002) ("Dang"), and Kreitz et al. (US 2004/0220081 Al, published Nov. 4, 2004) ("Kreitz"). Ans. 2. 2. Claim 21 under 35 U.S.C. § I03(a) as obvious in view of Yuk, Jirgensons, Dang, Kreitz, and Morton et al. (US Pat. Publ. Appl. 2006/0292081 Al, published Dec. 28, 2006) ("Morton"). Ans. 2-3. 3. Claim 41 under 35 U.S.C. § I03(a) as obvious in view of Yuk, Jirgensons, Dang, Kreitz, and Norling et al. (US 5,958,458, issued Sept. 28, 1999) ("Norling"). Ans. 3. Claim 1, the only independent claim on appeal, reads as follows: 1. A method for preparing a spray dried composition having residual solvent content of less than about 10% by weight compnsmg: a) providing a mixture comprising a polymer and an active agent in a blend of a solvent and non-solvent for the polymer wherein the solvent has a lower boiling point than the non-solvent, wherein the polymer comprises polyvinyl pyrrolidone, the solvent comprises dichloromethane and the non-solvent comprises acetone; b) distributing the mixture into either droplets or granules, and c) evaporating the solvent and non-solvent mixture to form particles having an average size of from about 0.5 µm to about 5000 µm; wherein the active agent is selected from the group consisting of [See Appeal Br. 13-14 for list of active agents]. 2 Appeal2017-008318 Application 11/495,993 DISCUSSION The Examiner found that Yuk describes preparing a pharmaceutical composition comprising steps of mixing a solution of water-insoluble drug (ipriflavone) (the "active agent" of claim 1) in an organic solvent (acetone) as in step a) of claim 1, and spray drying the mixture to obtain microparticles comprising the polymer and drug as in steps b) and c) of claim 1. Final Act. 4. The Examiner also found that Yuk describes utilizing polyvinyl pyrrolidone ("PVP"), the same polymer recited in step a) of claim 1. Id. While Yuk discloses the use of "non-solvent" acetone in its method as required by rejected claim 1, the Examiner stated Yuk does not disclose the claimed solvent dichloromethane in step a) of the claim. Final Act. 4. Rather, the Examiner found that Yuk discloses aqueous ethanol. Id. at 4--5. The Examiner found that Dang teaches that dichloromethane is a solvent for PVP. Final Act. 5. The Examiner found it would have been obvious to one of ordinary skill in the art at the time of invention to substitute dichloromethane for aqueous ethanol as disclosed in Yuk as the solvent for PVP because "because dichloromethane has a lower boiling point than aqueous ethanol and would be expected to be easier to more completely remove than water/ethanol upon spray drying." Id. at 6. Appellant argues that Yuk, when read in its entirety, would be understood to only describe the use of an aqueous polymer solvent, and not a non-aqueous solvent such as dichloromethane. Appeal Br. 8. The issue is whether it would have been obvious to replace the aqueous ethanol of Yuk with dichloromethane to meet the claimed limitation "the polymer comprises polyvinyl pyrrolidone, the solvent comprises dichloromethane." 3 Appeal2017-008318 Application 11/495,993 We begin with the disclosure in Yuk. Yuk discloses in its abstract ( emphasis added): A method of preparing a pharmaceutical active ingredient comprising a water-insoluble drug is provided. In the method, a water-insoluble drug in an organic solvent is mixed with a water-soluble polymer in an aqueous solvent and spray-dried. Thereafter, the drug microparticles is mixed with oil. The method can easily prepare a pharmaceutical active ingredient including water-insoluble drug, exhibiting good bioavailability. The method of Yuk, according to the abstract, involves mixing: 1) a water-insoluble drug in an organic solvent, and 2) a water-soluble polymer in an aqueous solvent. The second step is at issue in the rejection. In the "Summary of the Invention," the same method is described. Yuk discloses: It is another object of the present invention to provide a pharmaceutical composition for oral administration comprising the water-insoluble drug. These and other objects may be achieved by a method of preparing a pharmaceutical active ingredient comprising a water-insoluble drug. The method includes the steps of mixing a water-insoluble drug in an organic solvent with a water- soluble polymer in an aqueous solvent and spray-drying the mixture. Yuk 2:14--20 (emphasis added). The claims in Yuk are also limited to an aqueous solvent and water- soluble polymer: 1. A method of preparing a pharmaceutical active ingredient composition including water-insoluble drug for oral administration comprising the steps of: mixing water-insoluble drug in an organic solvent with 4 Appeal2017-008318 Application 11/495,993 water-soluble polymer in an aqueous solvent; spray-drying the mixture. Yuk 8:2-7 (emphasis added). The only example in Yuk of an "aqueous solvent" is of "ethanol aqueous solution." Yuk 4:1; 5:16. The ethanol aqueous solution is described as including "1 part by weight of water and 1 part by weight of ethanol." Yuk 5:16-17. We have not been directed to a definition of the term "aqueous solution." The term "aqueous" means "made from, with, or by water.~-:: \Ve interpret "aqueous solutio1l' in light of Yuk 1 s disclosure to mean a solvent that comprises water, such as solvent comprising water and ethanol as explicit1y disclosed in )Tuk In the "Detailed Description of the Invention," the disclosure in Yuk uses different wording than what is disclosed in the 1) Abstract, 2) Summary of the Invention, and 3) the claims. In the latter three disclosures, Yuk refers to an "aqueous solvent." However, in the "Detailed Description of the Invention," Yuk refers to "an organic solvent such as ethanol aqueous solution." Yuk discloses: A water-insoluble drug is dissolved in an organic solvent such as acetone to prepare a drug solution. As the water- insoluble drug, ipriflavone, biphenyl dimethyl dicarboxylate and cyclosporin may be used. A water-soluble polymer is dissolved in an organic solvent such as ethanol aqueous solution to prepare a polymer solution. Yuk 3:21--4: 1. 2 https://www.merriam-webster.com/dictionary/aqueous (accessed May 29, 2019). 5 Appeal2017-008318 Application 11/495,993 The term "organic solvent" was used elsewhere in Yuk in the context of the water-insoluble drug being mixed or dissolved in an organic solvent. This is the first time "organic solvent" is used with respect to the water- soluble polymer. An "organic solvent" is a solvent comprising carbon atoms. 3 The "ethanol aqueous solution" is not an "organic solvent" as stated at 3:21--4:1 of Yuk ("an organic solvent such as ethanol aqueous solution") because it also comprises water which is not an organic carbon-containing compound. While ethanol, itself, is an organic solvent, the characterization of the "ethanol aqueous solution" as an "organic solvent" is not consistent with the ordinary meaning of the term "organic solvent" as comprising carbon atoms or the other disclosure in Yuk where the water-soluble polymer is described as being dissolved in "aqueous solvent." See Yuk's 1) Abstract, 2) Summary of the Invention, and 3) claims. For these reasons, it is our opinion that one of ordinary skill in the art would have understood Yuk to teach that the water-soluble polymer is dissolved or mixed with an aqueous solvent can comprise an organic solvent such as ethanol. The Examiner found "the only required parameters in selecting the polymer solvent are that it be organic, able to dissolve the water-soluble polymer, and be miscible with the drug solvent." Ans. 5. We did not agree that Yuk requires the polymer solvent be "organic." As explained above, when Yuk is read in its entirely, one of ordinary skill in the art would have understood that solvent must be aqueous, i.e., it must contain the non- organic compound water in addition to an organic solvent, such as water. 3 https://www.merriam-webster.com/dictionary/organic (accessed May 29, 2019). 6 Appeal2017-008318 Application 11/495,993 The Examiner did not make the finding that dichloromethane is an aqueous solvent nor that it would have been obvious to have mixed it with water to make an aqueous solvent comprising an organic solvent. Because the Examiner erred in finding that Yuk teaches that an organic solvent, alone, can be used with the water-soluble polymer PVP, and used this finding as the basis for all the rejections, we reverse the rejection of claim 1, dependent claims 7, 8, 13-15, 18-20, 22-28, and 40, and rejections 2 and 3 of dependent claims 21 and 41. REVERSED 7 Copy with citationCopy as parenthetical citation