Ex parte Dubois

Board of Patent Appeals and Interferences

Mar 17, 2000

08383912 (B.P.A.I. Mar. 17, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JEAN-LUC DUBOIS
_____________
Appeal No. 1997-0138
Application 08/383,912
______________
HEARD: FEBRUARY 24, 2000
_______________
Before PAK, WALTZ and KRATZ, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 4 through 6 and 8 through 11, which are
all of the claims remaining in the application.
Appeal No. 1997-0138
Application No. 08/383,912
2
Claims 4 and 10 are representative of the subject matter
on appeal and read as follows:
4. A process for the preparation of a cosmetic or
pharmaceutical composition of claim 10 comprising
preparing an aqueous emulsion or suspension of a compound
of formula
I and at least one lipid compound and optionally
additives, stirring the emulsion or suspension at 40E to
80EC and reducing the size of the liposomes.
10. A
cosmetic or
pharmace utical
composit ion
containi ng a
dermato
gically effecti
ve amount
of at least one liposome containing an active compound of
the formula
wherein R is1
selected from
the group consisting of -CN,
-NO and halogen, R is -CF or halogen, -A-B- is selected 2 2 3
from the group consisting of
Appeal No. 1997-0138
Application No. 08/383,912
3

wherein X and Y are oxygen and R is selected from the3
group consisting of hydrogen and alkyl of 1 of 4 carbon
atoms optionally substituted with -OH or methoxy and
wherein the cosmetic or pharmaceutical composition is free
of volatile solvents.
Appeal No. 1997-0138
Application No. 08/383,912
4
As evidence of obviousness, the examiner relies on the
following prior art:
Evans et al. (Evans) 5,358,752 Oct. 25,
1994
(Filed Feb. 23, 1993)
Gaillard-Kelly et al. (Kelly) 5,411,981 May
2, 1995
(Filed May 18, 1993)
Claims 4 through 6 and 8 through 11 stand rejected under
35 U.S.C. § 103 as unpatentable over the combined disclosures
of Kelly and Evans.
We reverse.
The claimed subject matter is directed to a cosmetic or
pharmaceutical composition comprising at least one liposome
containing a particular dermatologically active compound. The
cosmetic or pharmaceutical composition is free of any (not
even a trace amount of) volatile solvents since the liposomes
employed are prepared without using any such volatile
solvents. See specification, pages 11-13.
We find that the examiner has supplied a reasonable basis
for employing the liposomes described in Evans as a delivery
system for the active dermatological compounds described in
Kelly. See Answer, page 3. However, the examiner has
Appeal No. 1997-0138
Application No. 08/383,912
Evans prepares liposomes in a volatile organic solvent1
(chloroform). See column 5, example 6.
5
supplied no evidence to demonstrate that the resulting
pharmaceutical composition would be free of any volatile
solvent . Nor has the examiner supplied any evidence1
regarding the claimed process for preparing the same.
The examiner argues that the pharmaceutical composition
resulting from the combined teachings of Kelly and Evans
"would inherently be free of solvent" because "the organic
solvent is typically evaporated from the composition in
liposome formation." See Answer, pages 4 and 5. However, the
examiner has not supplied any factual basis to support the
determination that the typical volatile organic solvent
evaporation technique would necessarily remove any and all
volatile solvents present in the pharmaceutical composition.
See Ex parte Levy, 17 USPQ2d 1461, 1463-64 (Bd. Pat. App. &
Int. 1990). It is well settled that inherency cannot be
established by probabilities or possibilities. See In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981); In
re Rijckaert, 9 F.3d 1531, 1534,
28 USPQ2d 1955, 1957 (Fed. Cir. 1993).
Appeal No. 1997-0138
Application No. 08/383,912
Moreover, we note that the examiner does not rely on2
appellant’s admission or other patent literature in her
statement of rejection. When, as here, the statement of
rejection does not include appellant’s admission or other
patent literature as the prior art supporting the rejection,
we need not consider them in evaluating the examiner’s
rejection. In re Hoch, 428 F.2d 1341, 1342 n. 3, 166 USPQ
406, 407 n. 3 (CCPA 1970).
6
The examiner also argues that "applicant acknowledges at
p. 10 of the disclosure that his process of making the
liposomal composition is known in the art and described in
other patent literature." See Answer, page 4. Nowhere does
the disclosure relied on by the examiner, however, clearly
admit that the claimed process was "known . . . and described
in other patent literature [at the time of the invention] ." 2
See specification, page 10.
In view of the foregoing, we agree with appellant that
the examiner has not established a prima facie case of
obviousness regarding the claimed subject matter.
Accordingly, we reverse the examiner’s decision rejecting all
of the appealed claims under 35 U.S.C. 103.
OTHER ISSUE
In the "Response to argument" section of the Answer, the
examiner relies on page 10 of the disclosure to show that
Appeal No. 1997-0138
Application No. 08/383,912
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appellants’ process for preparing the liposomal composition is
"known in the art and described in other patent literature."
As indicated supra, the reference on page 10 of the
specification, as well as other references on pages 2 and 5,
have not been included in the statement of the rejection.
Upon return of this
application to the jurisdiction of the examiner, the examiner
should review these references and consider the patentability
of the claimed subject matter in light of this acknowledged
prior art. Note that French Patent 2,627,385 and European
Patent Applications 342,100 are said to disclose cosmetic and
pharmaceutical compositions containing vesicles of liposome
type. Note also that European Patent Applications 494,819 and
0,580,459 are said to disclose the claimed active compound.
No time period for taking any subsequent
action in connection with this appeal may be extended under
37 CFR § 1.136(a).
REVERSED
)
CHUNG K. PAK )
Appeal No. 1997-0138
Application No. 08/383,912
8
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PETER F. KRATZ )
Administrative Patent Judge )
CKP:hh
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