Ex Parte Dubow

Board of Patent Appeals and Interferences

Sep 13, 2010

10464105 (B.P.A.I. Sep. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte IRVINE DUBOW
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Appeal 2010-007346
Application 10/464,105
Technology Center 1600
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Before CAROL A. SPIEGEL, TONI R. SCHEINER, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
ophthalmic composition and a method of preparing an ophthalmic
composition. The Patent Examiner rejected the claims on the ground of
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

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 2010-007346
Application 10/464,105

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STATEMENT OF THE CASE
Claims 1-5, 7-12 and 14-23, which are all the pending claims, are on
appeal. (App. Br. 4.) Claim 1 is representative and reads as follows:
1. An ophthalmic composition comprising:
two surfactants, one of which is tyloxapol;
a preservative with reduced immunogenicity relative to thimerosol;
a complexing agent; and
deionized, demineralized, ozonated water.

17. The composition of claim 1 which comprises tyloxapol, parabens,
EDTA, glycerin and Tween 80.

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
unpatentable over Chowhan2 and Aviv.3
OBVIOUSNESS
The Issue
The Examiner’s position is that Chowhan and Aviv both taught
compositions for treating the eye. (Ans. 4.) Although their compositions
differed individually from Appellant’s composition, the Examiner concluded
that it would have been obvious to select their components to make another
composition, including multiple surfactants, thus rendering Appellant’s
composition obvious. (Id. at 4-5.)
Appellant contends that “neither Chowhan et al. not Aviv et al.
disclose or suggest a composition that includes at least two nonionic
surfactants or a composition with deionized, demineralized, ozonated
water.” (App. Br. 11.)
The issues are:

2 US 6,620,797 B2, issued to Masood A. Chowhan et al., Sep. 16, 2003.
3 US 5,496,811, issued to Haim Aviv et al., Mar. 5, 1996.
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did Chowhan and Aviv teach or suggest a composition that includes at
least two nonionic surfactants; and
did Chowhan and Aviv teach or suggest a composition with
deionized, deminineralized, ozonated water?
Findings of Fact
1. We adopt the Examiner’s specific findings on the scope and content
of the prior art.
2. We find that the Examiner pointed to Chowhan’s disclosure of
nonionic surfactants at col. 3, ll. 5-7. (Ans. 4.)
3. The paragraph in which Chowhan’s disclosure of nonionic surfactants
appears reads, in part:
The artificial tear solutions of the present invention may also
contain one or more nonionic surfactants to lower the surface
tension of the solutions and thereby enhance spreading of the
solutions over the surface of the cornea. The preferred nonionic
surfactants have an HI B value of 15 or greater. Examples of
suitable nonionic surfactants include the polysorbates, such as
polysorbate 80, which is also known as “Tween 80”, and
tetrafunctional block copolymers derived from the addition of
ethylene oxide and propylene oxide to ethylenediamine.

(Chowhan, col. 2, l. 66 – col. 3, l. 8.)
Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).
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Analysis
The evidence supports the Examiner’s finding that Chowhan
suggested a composition with at least two nonionic surfactants. Chowhan
explicitly taught using “one or more nonionic surfactants.” (FF3.) We are
therefore unpersuaded of error by Appellant’s first argument.
Appellant’s second argument concerns the “deionized, demineralized,
ozonated water” limitation. While the statement of rejection correctly found
that Chowhan taught using “purified water” and Aviv taught using “distilled
water” (Ans. 4), the rejection did not address the difference, if any, between
those kinds of water and the “deionized, demineralized, ozonated water”
required by claim 1. Because the rejection of record did not account for
every claim limitation, we are constrained to reverse the rejection. See
Ochiai, 71 F.3d at 1572.
CONCLUSION
The rejection of record did not account for the “deionized,
demineralized, ozonated water” required by the claims.
SUMMARY
We reverse the rejection of claims 1-5, 7-12 and 14-23 under
35 U.S.C. § 103(a) as unpatentable over Chowhan and Aviv.

REVERSED

lp

Appeal 2010-007346
Application 10/464,105

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