Ex Parte DubowDownload PDFBoard of Patent Appeals and InterferencesSep 13, 201010464105 (B.P.A.I. Sep. 13, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte IRVINE DUBOW __________ Appeal 2010-007346 Application 10/464,105 Technology Center 1600 __________ 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 2 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. Appeal 2010-007346 Application 10/464,105 3 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). Appeal 2010-007346 Application 10/464,105 4 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 5 SCHWEGMAN, LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS MN 55402 Copy with citationCopy as parenthetical citation