Ex Parte Hee et al

Patent Trial and Appeal Board

Feb 8, 2016

12528973 (P.T.A.B. Feb. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/528,973 12/09/2009
84331 7590 02/10/2016
MMWVIP,LLC
10 NORTH JEFFERSON ST
STE 100
FREDERICK, MD 21701
FIRST NAMED INVENTOR
Pim Van Hee
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.
2919208-07 5000 8348
EXAMINER
BERRY,LAYLAD
ART UNIT PAPER NUMBER
1673
NOTIFICATION DATE DELIVERY MODE
02/10/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@mmwvlaw.com
cgmoore@mmwvlaw.com
dwoodward@mmwvlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIM v AN HEE,
GABRIEL MARINUS HENRICUS MEESTERS,
WILLEM JOHANNES WILDEBOER,
STEPHEN L.A. HENNART, and ALBERT-JON VIS 1
Appeal2013-002882
Application 12/528,973
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and JOHN G. NEW,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state the real party-in-interest is DSM IP Assets B.V.,
Netherlands. App. Br. 4.
Appeal2013-002882
Application 12/528,973
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-8 and 16-21, which constitute all
the claims on Appeal in this application.2 Specifically, claims 1---6 and 8
stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious
over the combination of Onishi et al. (US 4,474,872, October 2, 1984)
("Onishi"), Dan Li and Richard B. Kaner, Shape and Aggregation Control of
Nanoparticles: Not Shaken, Not Stirred, 128 J. AM. CHEM. Soc. 968-75
(2006) ("Li"), and T. Yokoyama and C.C. Huang, Nanoparticle Technology
for the Production of Functional Materials, 23 KONA 1-17 (2005)
("Yokoyama").
Claims 7, 17, and 19 stand rejected as unpatentable under 35 U.S.C.
§ 103 (a) as being obvious over the combination of Onishi, Li, Yokoyama,
and Kwon et al. (US 6,413,537 Bl, July 2, 2002) ("Kwon").
Claims 16 and 18 stand rejected as unpatentable under 35 U.S.C.
§ 103 (a) as being obvious over the combination of Onishi, Li, Yokoyama,
and Ang (US 6,291,436 Bl, September 18, 2001) ("Ang").
Claim 20 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of Onishi, Li, Yokoyama, and Inoue et
al. (JP 11318340 (A), November 24, 1999) ("Inoue").
Claim 21 stands rejected as unpatentable under 35 U.S.C. § 103(a) as
being obvious over the combination of Onishi, Li, Yokoyama, and
Hussmann (DE 3130346 (Al), February 17, 1983) ("Hussmann").
2Claims 10 and 14 are canceled. Claims 9, 11-13, 15, 22, and 23 are
withdrawn. App. Br. 4.
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Application 12/528,973
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellants' invention is directed to a method for preparing a
suspension of micronised particles of a solid organic compound. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A method for preparing a suspension of micronized particles
of a solid organic compound, wherein the mean particle size
over a period of at least 1 day after size reduction does not
increase more than a factor 10 and the suspension is free of
surfactants, thickeners, poly-electrolytes or block
copolymers, the method comprising the steps of:
a) subjecting the solid organic compound to wet grinding at
distinct pH values to obtain suspensions of micronised
particles of the solid organic compound each having a
distinct pH value, or subjecting the solid organic
compound to wet grinding at one pH value and adjusting
the pH of the suspension after grinding to obtain
suspensions of micronised particles of the solid organic
compound each having a distinct pH value,
b) determining which of the obtained suspensions has a mean
particle size over a period of at least 1 day after size
reduction that does not increase more than a factor 10, and
c) preparing a suspension of micronised particles of the solid
organic compound, wherein the mean particle size over a
period of at least 1 day after size reduction does not
increase more than a factor 10, by subjecting the solid
organic compound to size reduction by wet grinding under
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App. Br. 22.
pH conditions, said pH conditions being those determined
from steps a) and b ), wherein the suspension has a mean
particle size over a period of at least 1 day after size
reduction that does not increase more than a factor 10
according to step b.
ISSUES AND ANALYSES
The Examiner's prima facie case
The Examiner has concluded it would have been obvious to one of
ordinary skill in the art to combine the teachings of Onishi, Li, and
Yokoyama to prepare suspensions of organic molecules by testing the
stability of the particles at different pH values and wet grinding the
compound at a defined pH. Final Act. 4. The Examiner finds Onishi
teaches emulsions of water-insoluble molecules at a controlled pH and
determining the appropriate pH by testing the stability of the compounds
under different pH conditions. Id. Li teaches that pH affects not only the
chemical stability of organic emulsions, but also the particle size and the
degree to which the particles will aggregate. Id. Because Li also teaches
aggregation of organic molecules is problematic, the Examiner concludes
the skilled artisan would combine the teachings of Li and Onishi with those
of Yokoyama, which teaches adjustment of the pH to minimize aggregation.
Claims 1---6 and 8
Issue 1
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Appellants argue the Examiner erred in finding the combined cited
prior art references teach or suggest limitations b) and c) of claim 1. App.
Br. 9.
Analysis
Appellants argue that, although Onishi, upon which the Examiner
principally relies, teaches samples prepared at different pH values, that
teaching alone is distinctly different from performing steps b) and c) as
claimed. App. Br. 10. Appellants assert there is no teaching or suggestion
by Onishi, requiring the determination of "which of the obtained suspensions
[from step a)] has a mean particle size over a period of at least 1 day after
size reduction that does not increase more than a factor 10." Id. (citing
Onishi col. 7, Example 2). According to Appellants, there is also no
suggestion from Onishi that, having prepared samples at different pH values,
a subsequent step c) as claimed would be performed. Id. Appellants
contend the Examiner's finding "Onishi teaches wet granulation of organic
molecules at controlled pH" is insufficient, by itself to provide a reasonable
suggestion of the recited steps b) and c) of claim 1 that are required to
prepare a suspension of micronized particles. Id. (citing Final Office Act.
4).
Appellants argue further that neither Li nor Yokoyama cure the
deficiencies of Onishi in failing to teach limitations b) or c) of claim 1. App.
Br. 10-11.
The Examiner finds Onishi teaches a method for preparing a
dispersion of an organic compound having a particle size of 1 µm or less by
mechanically grinding and dispersing the particles at controlled pH. Final
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Act. 3 (citing Onishi Abstract; col. 2, 11. 30-39). The Examiner finds the
process taught by Onishi is carried out without using any wetting agent or
dispersing agent, which had previously been considered essential. Id. (citing
Onishi col. 2, 11. 15-27). The Examiner points to Onishi's preparation of
several samples at different pH values and specifically to the reference's
comparison of their stabilities. Id. (citing Onishi col. 7, Ex. 2). However,
finds the Examiner, Onishi does not teach determining which of the
suspensions has a mean particle size over a period of at least 1 day after size
reduction that does not increase more than a factor 10. Id.
The Examiner finds Li teaches aggregation is a problem in the
production and use of many chemical and pharmaceutical products and that
aggregation can be minimized by adjusting the pH to an optimal window.
Final Act. 4 (citing Li 968, 971 ). The Examiner finds Li teaches that pH
control helps prevent aggregation via electrostatic repulsions and that
electrostatic repulsion is not specific to polyaniline. Ans. 6. The Examiner
finds Li also teaches that aggregation is a problem in many chemical and
pharmaceutical products, and therefore the teachings of Li with respect to
the effect of pH control and electrostatic repulsion on aggregation is not
limited to polyaniline. Id.
Finally, the Examiner finds Yokoyama teaches particle size can be
reduced by pH adjustment during grinding. Ans. 4 (citing Yokoyama 8).
We agree with the Examiner's analysis and are not persuaded by the
Appellants' arguments to the contrary. Limitation b) recites: "determining
which of the obtained suspensions has a mean particle size over a period of
at least 1 day after size reduction that does not increase more than a factor
[of] 10." Li teaches:
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We have recently demonstrated that postsynthetic aggregation of
polyaniline particles in an aqueous dispersion can be prevented
via electrostatic repulsions if the pH is set properly. With the
interference due to postsynthetic aggregation minimized by
adjusting the pH to an optimal window, the original particle sizes
of the polyaniline products can be reliably measured with a light
scattering-based particle size analyzer. Figure 3 shows the
particle size distributions of the purified products prepared at
different temperatures and stirring speeds. In all cases we have
tested, a stirred reaction always results in a higher percentage of
large particle sizes than a nonstirred reaction.
Li 971 (footnote omitted). Li also teaches:
On the other hand, stirring could induce colloidal coagulation
because stirring-induced shear can enhance the mutual collisions
of particles in both intensity and probability. This latter
phenomenon appears to occur with as-prepared polyaniline
nanofibers. Sedimentation is observed if stable polyaniline
suspensions prepared in the absence of mechanical disturbances
are stirred after the polymerization is complete. However, as
compared to the case of stirring applied during polymerization,
the sedimentation induced by postsynthetic stirring is much less
remarkable. Moreover, we find that once the sediments are
purified and diluted, their particle size distributions are almost
identical to the case without postsynthetic stirring, indicating
that the aggregation induced by postsynthetic stirring is
reversible and that shear-induced coagulation is not the key
reason for the stirring-induced aggregation of polyaniline.
Li 972 (emphases added). Li thus teaches: (1) postsynthetic aggregation can
be prevented by controlling pH; (2) postsynthetic nanofibers form stable
suspensions; and (3) the nanofiber particle size in the postsynthetic
suspensions are essentially identical after stirring. We agree with the
Examiner that a person of ordinary skill, upon reviewing the teachings of Li,
would realize that Li teaches "the obtained suspensions ha[ ve] a mean
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particle size over a period of at least 1 day after size reduction that does not
increase more than a factor [of] 10." We therefore agree with the Examiner
that Li teaches or suggests limitation b) of claim 1.
Limitation c) recites:
[P]reparing a suspension of micronised particles of the solid
organic compound, wherein the mean particle size over a period
of at least 1 day after size reduction does not increase more than
a factor 10, by subjecting the solid organic compound to size
reduction by wet grinding under pH conditions, said pH
conditions being those determined from steps a) and b ), wherein
the suspension has a mean particle size over a period of at least
1 day after size reduction that does not increase more than a
factor 10 according to step b.
The Examiner finds Yokoyama teaches particle size can be reduced by
pH adjustment during grinding. Ans. 4 (citing Yokoyama 8). We agree.
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Yokoyama teaches:
In addition to the grinding intensity, the physicochemical
conditions of the grinding processes could affect the outcomes of
nano-grinding. Fig. 3 showed that the size reduction of products
stopped at a certain grinding time, but its particle size could
further be reduced when the pH value of the slurry was adjusted
to better disperse the particles in it. The pH value of the slurry
could be controlled by measuring its zeta potential.
Yokoyama 8. Yokoyama thus teaches that the initial particulate size can be
reduced (prior to suspension) by adjusting the pH value of the slurry during
the wet grinding process. We agree with the Examiner that Yokoyama' s
teaching of using pH to reduce particle size, combined with the teachings of
Li related supra, teach limitation c) of claim 1. We consequently affirm the
Examiner's rejection on this issue.
Issue 2
Appellants argue the Examiner erred because Onishi teaches away by
teaching the use of a thickener in order to create a stable photographic
emulsion composition.
Analysis
Appellants argue the Examiner erred because claim 1 requires "the
suspension is free of surfactants, thickeners, poly-electrolytes or block
copolymers." App. Br. 11. Appellants contend the Examiner finds Onishi
teaches "a method for preparing a dispersion of an organic compound having
a particle size of 1 µ or less, by mechanically grinding and dispersing the
particles at controlled pH" and "[t]he process is carried out without using
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any wetting agent or dispersing agent, which had previously been considered
essential." Id. at 11-12 (quoting Final Act. 3).
Appellants assert Onishi teaches a "protective colloid" is added in
order to make the dispersion/emulsion combination stable. App. Br. 12.
Appellants point to column 4, lines 52-57, of Onishi, which recites: "after a
dispersion obtained in this invention is mixed with a protective colloid, the
resulting mixture can be stored for a long time ... and added to a silver
halide emulsion." Id. Appellants assert Onishi also teaches examples of
"protective colloids" including: "gelatin, carboxymethyl cellulose, cellulose
sulfate, polyvinyl alcohol and so on. Of these protective colloids, gelatin is
the most favorable one." Id. at 13 (quoting Onishi col. 4, 11. 58---63).
Appellants also point to col. 6, lines 19-25 of Onishi, which states that "a
mixed composition may be prepared using a protective colloid. The mixed
composition prepared can be stably preserved over a long period of time,
specifically a month or longer. ... " Id. Appellants contend it was well-
known in the art at the time of invention that gelatin is a thickening agent.
Id.
The Examiner responds that the process taught by Onishi is carried
out without any wetting agent or dispersing agent, which had previously
been considered essential. Ans. 9. The Examiner finds Onishi teaches that
the protective colloid (including gelatin, a thickener) is optional, and a
suitable composition can be achieved whether the colloid is added or not.
Id. (citing Onishi col. 4, 11. 42-51).
Appellants reply that Onishi teaches adding a protective colloid is
optional with reference to creating a suitable photographic emulsion with
"sufficient photographic properties." Reply Br. 6 (citing Onishi col. 4, 1.
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51 ). Appellants argue the optional language is not used in reference to
creating a composition that will be stable and free of aggregation. Id.
Rather, argue Appellants, Onishi mentions long term storage-stable
compositions that do not exhibit aggregation in the context of dispersions
mixed with a protective colloid, which, preferably, is gelatin (a thickener).
Appellants point to the immediately pursuing passage of Onishi, which
recites: "after a dispersion obtained in this invention is mixed with a
protective colloid, the resulting mixture can be stored for a long time." Id.
(quoting Onishi col. 4. 11. 52-53; citing also col. 6, lines 20-22). Appellants
maintain Onishi only mentions stable dispersions in the context of adding a
protective colloid and that the optional language the Examiner relies on
relates only to creating emulsions with suitable photographic properties. Id.
We are not persuaded by Appellants' arguments. Onishi teaches:
A dispersion obtained in this invention may be directly
added to a photographic emulsion (for example, a silver halide
emulsion and a hydrophilic colloid emulsion) as it is, or after
being mixed with a protective colloid the resulting mixture,
whether it is in a liquid state or in a gelled state, may be added to
a photographic emulsion (for example, a silver halide emulsion
and a hydrophilic colloid emulsion). In all the cases, sufficient
photographic properties can be obtained.
In addition, after a dispersion obtained in this invention is
mixed with a protective colloid, the resulting mixture can be
stored for a long time under a temperature of 3 0°C or below, or
in a refrigerator. The preserved mixture can be taken out when
the occasion demands and added to a silver halide emulsion.
Onishi col. 4, 11. 43-57 (emphases added). Onishi thus explicitly teaches the
use of a colloid, including gelatin, as an optional ingredient (i.e., may be
mixed) to the emulsion to stabilize it over long intervals or during
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refrigeration. Onishi also teaches that the emulsion may be made and used
without use of a protective colloid. However, nothing in the language of
claim 1 requires that the claimed emulsion be stable for long periods or
withstand refrigeration.
A reference teaches away when "a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). Onishi teaches the optional use of a protective colloid and Appellants
point to no teaching or suggestion of Onishi that would discourage or divert
a person of ordinary skill from not using a protective colloid, rather Onishi
suggests the use of a protective colloid if long-term storage or refrigeration
is desirable. We consequently affirm the Examiner's rejection on this issue.
Issue 3
Appellants argue the Examiner erred because there is no teaching or
suggestion by Li or Onishi that would have led one of ordinary skill in the
art to combine the references.
Analysis
Appellants argue Li is directed toward the elucidation of a specific
aggregation problem and solution identified with respect to polyaniline
nanoparticle emulsions. App. Br. 14 (citing Li 969). Appellants contend a
person of ordinary skill in the art would not have been motivated to combine
the teachings of Li with Onishi' s teaching of a dispersion solution containing
a thickener could be utilized in photographic emulsions. Id.
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The Examiner finds both Li and Onishi approach the issue of
preparing suspensions of water-insoluble molecules. Final Act. 4. The
Examiner finds Li teaches pH control helps prevent aggregation via
electrostatic repulsions, which is not a problem specific only to polyaniline
suspensions, but is common to many chemical and pharmaceutical product
suspensions. Final Act. 6. The Examiner therefore finds Li teaches a
solution to a broader problem and that a person of ordinary skill in the art
would be motivated to combine the teachings of Li and Onishi. Id.
We are not persuaded by Appellants' arguments. Onishi teaches a
method for producing a photographic emulsion. Onishi Abstract.
Specifically, Onishi teaches:
[A]dding a dispersion of a substantially water-insoluble
photographic additive to a photographic emulsion. The
dispersion being prepared merely by mechanically grinding and
dispersing the photographic additive in a form of fine grain
having a size of 1 µ or less in an aqueous system adjusted to a pH
value of 6 to 8 and controlled to a temperature of 60° to 80° C.
Id. Li teaches that aggregation is problematic in the preparation of
emulsions of water-insoluble organic polyaniline nanofibers, and teaches
aggregation can be minimized by optimizing the pH of the suspension. Li
971.
Appellants implicitly argue that the references cannot be properly
combined because they are from non-analogous arts (i.e., photographic
emulsions and polyaniline nanofiber suspensions). However, "two separate
tests define the scope of analogous prior art: (1) whether the art is from the
same field of endeavor, regardless of the problem addressed and, (2) if the
reference is not within the field of the inventor's endeavor, whether the
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reference still is reasonably pertinent to the particular problem with which
the inventor is involved." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004).
Even if we accept, arguendo, Appellants' argument that the two references
are from different fields of endeavor, we agree with the Examiner that both
references are reasonably pertinent to the problem Appellants' claimed
invention addresses, viz., the preparation of suspensions or emulsions of
water-insoluble particles. We therefore affirm the Examiner's rejection on
this ground.
Issue 4
Appellants argue the Examiner erred because Li teaches away from
Appellants' claimed method. App. Br. 15.
Analysis
Appellants argue Li explicitly teaches that "stirring-induced
agglomeration" (a type of mechanical agitation) is responsible for the
precipitates formed during the synthesis of polyaniline nanoparticles. App.
Br. 15. Appellants assert one of ordinary skill in the art would view the
teachings of Li as inapplicable to the currently claimed method, which
requires "wet grinding, which, Appellants maintain is a form of mechanical
agitation that would be disfavored by Li's teachings. Id.
The Examiner responds that Li teaches avoiding stirring is one way of
avoiding aggregation of polyaniline, but also teaches that aggregation can be
prevented via electrostatic repulsions at the proper pH. Ans. 10 (citing Li
971 ). The Examiner finds Li teaches mechanical shear can break up
aggregated particles and keep particles well dispersed. Id. (citing Li 971 ).
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The Examiner finds Li teaches stirring-induced agglomeration is principally
related to the nucleation and growth of polyaniline, and not to post-synthetic
stirring. Id. (citing Li 972). The Examiner therefore finds Li teaches
stirring-induced agglomeration is of concern during the synthesis of
polyaniline and not during postsynthetic stirring, and that mechanical shear
can actually break up aggregated particles.
We are not persuaded by Appellants' arguments. The method of Li is
directed to the synthesis and emulsification of polyaniline nanoparticles. Li
Abstract. Li teaches that problematic aggregation of polyaniline
nanoparticles occurs principally by stirring during the synthetic polymeric
process. Li 969. However, Li also teaches this aggregation can be
minimized by altering the pH during synthesis, and that, as the Examiner
finds, shearing forces caused by postsynthetic stirring may break up
aggregates. Li 972. However, Li makes no mention whatever of post-
synthetic wet grinding, as recited in claim 1, nor do Appellants point to any
teaching of Li that would explicitly divert or discourage an artisan of
ordinary skill from combining the teachings of Li with those of the other
cited references, including Onishi and Yokoyama, which specifically teach
post-synthetic grinding. See, e.g., Onishi, col. 2, 11. 30-39; Yokoyama 8.
We consequently affirm the Examiner's rejection of claim 1.
B. Claims 7, 17, and 19
Issue
Appellants argue these claims together. Dependent claim 7 is
representative and recites: "A method according to claim 1 characterized in
that the organic compound is a polyene antibiotic." App. Br. 23. Appellants
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argue the Examiner erred because Kwon teaches away from the claimed
method. Id. at 16.
Analysis
Claim 7 depends from claim 1, which recites: "the suspension is free
of surfactants, thickeners, poly-electrolytes or block copolymers."
According to Appellants, "Kwon teaches dispersing agents, e.g.[,] block
copolymers, are required when formulating polyene antibiotic compositions
of nystatin." App. Br. 16 (citing Kwon col. 2, 11. 29--47). Appellants point
out that Kwon further teaches the dispersing agents are present in an amount
by weight of "10 to 98%." Id. (citing Kwon col. 2, 11. 32-35). Kwon states
that the "dispersing agent is present in an amount effective to reduce
aggregate formation of nystatin in an aqueous solution." Kwon col. 2, lines
39--40. Appellants therefore assert that one of ordinary skill in the art would
understand from the teachings of Kwon that nystatin formulations require
use of a dispersing agent to reduce aggregation of the nystatin particles. Id.
The Examiner responds that Onishi teaches that, with proper pH
control, the use of dispersing agents can be avoided. Ans. 11. The
Examiner therefore finds Onishi presents a different, and improved, solution
to the problem posed by Kwon. Id. The Examiner rejects Appellants'
argument that a skilled artisan would not look to Onishi for improvements to
Kwon's composition because the chemical compounds in each composition
are different. Id. The Examiner agrees that the chemical compounds recited
in Onishi and Kwon are different, however the Examiner finds that because
both references are concerned with preparation of dispersions of non-water-
soluble substances in an aqueous suspension or emulsion, both references
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are pertinent to the same problem and concludes it would be obvious to one
of ordinary skill to combine the references. Id. (citing MPEP § 2141 ).
We agree with the Examiner. Kwon teaches the use of block co-
polymers as a dispersing agent used to prevent aggregate formation of the
insoluble organic molecules in an emulsion. Kwon col. 2, 11. 34--40. Onishi
teaches a novel way of suspending finely divided water-insoluble particles in
an emulsion while controlling the pH. Onishi col. 2, 11. 30-39. Moreover,
Li also teaches that postsynthetic aggregation of organic aniline nanofibers
can be avoided by alteration of the pH. Li 971. Features of a secondary
reference need not be capable of incorporation into the structure of a primary
reference, nor must the invention be suggested completely by one reference.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). We agree with the Examiner
that a person of ordinary skill would realize, upon absorbing the teachings of
Onishi, Li, and Kwon that alteration of the pH, as taught by Onishi and Li,
could substitute for the block co-polymer taught by Kwon and would be thus
motivated to combine the teachings of the references. Moreover, we agree
with the Examiner that although Onishi, Li, and Kwon are directed to
different chemical compounds, all references are directed to the formulation
of emulsions of water-insoluble compounds in aqueous suspensions and are
therefore pertinent to the same problem. We consequently affirm the
Examiner's rejection of the claims.
C. Claims 16 and 18
Issue
Appellants argue these claims together. Claim 16 is representative
and recites: "A method according to claim 1, wherein the organic compound
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is natamycin." App. Br. 24. Appellants argue the Examiner erred because
"Ang teaches the use of anti-caking material and surfactants are to be mixed
with the natamycin, in order to derive a stable composition." Id. at 18
(emphasis omitted).
Analysis
Appellants make essentially identical arguments as were made with
respect to claims 7, 1 7, and 19 supra, viz., that claim 1, from which claim 16
depends requires "the suspension is free of surfactants, thickeners, poly-
electrolytes or block copolymers." App. Br. 18.
We have related supra why we find Appellants' arguments in this
regard to be not persuasive. We incorporate by reference our findings and
conclusion here, and we affirm the Examiner's rejection of the claims.
D. Claim 20
Issue
Claim 20 is argued separately and recites: "A method according to
claim 1, wherein the organic compound is cocoa." App. Br. 25. Appellants
argue the Examiner erred because Inoue fails to cure the deficiencies of
Onishi, Li, and Yokoyama. App. Br. 20.
Analysis
Appellants argue Inoue provides no teaching or suggestion of the
recited method steps b) or c ). App. Br. 20. Appellants therefore contend
Inoue is not able to remedy the deficiencies of the three references with
respect to the claimed method steps. Id. Appellants further contend one of
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ordinary skill in the art seeking to derive a process for preparing suspensions
of micronized cocoa particles would not have turned to prior art directed to
photographic emulsions (Onishi), or polyaniline nanoparticle aggregation
induced by mechanical agitation (Li), or nanoparticle technology for the
production of functional materials (Yokoyama). Id.
We are not persuaded. We have related supra with respect to claims
1---6 and 8 why we agree with the Examiner's findings that the combined
cited prior art references teach limitations b) and c) of claim 1 and we
incorporate our findings by reference with respect to claim 20. Furthermore,
we have also explained why a person of ordinary skill would look to the
prior art with respect to methods of formulating suspensions ofwater-
insoluble compounds in an aqueous suspension or emulsion and would tum
to references that were pertinent to that problem, and the prevention of
aggregates in the emulsion and we also incorporate that reasoning with
respect to claim 20. We therefore affirm the Examiner's rejection of the
claim.
E. Claim 21
Appellants repeat their arguments made with respect to claim 20,
substituting Hussmann for Inoue. App. Br. 20-21. We repeat our findings
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and conclusion made with respect to claim 20 and we atlirm the Examiner's
rejection of the claim.
CONCLUSION
For the reasons set forth supra, we agree with the Examiner's
reasoning that claims 1-8 and 16-21 are prima facie obvious. We
consequently affirm the rejection of the claims.
DECISION
The Examiner's rejection of claims 1-8 and 16-21 as unpatentable
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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