Ex parte PEHRSON ET. AL.

Board of Patent Appeals and Interferences

Feb 18, 1998

07752831 (B.P.A.I. Feb. 18, 1998)

Application for patent filed August 30, 1991. 1
According
to applicants, this application is a continuation-in-part of
Application 07/407,813, filed September 13, 1989, now
abandoned.
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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(2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID W. PEHRSON SR. and MICHAEL P. ROMANOWSKY
____________
Appeal No. 94-2912
Application 07/752,8311
____________
ON BRIEF
____________
Before WINTERS, SOFOCLEOUS and GRON, Administrative Patent
Judges
GRON, Administrative Patent Judge.
DECISION ON APPEAL UNDER 35 U.S.C. § 134
Appeal No 94-2912
Application 07/752,831
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This is an appeal from an examiner’s rejection of Claims
1, 23, 31-33 and 39-41, all claims pending in this
application. Claims 1, 23, 31-33 and 39-41 stand rejected
under 35 U.S.C.
§ 103 as being unpatentable in view of the combined teachings
of Packman, U.S. Patent 4,945,084, issued July 31, 1990, from
an application filed July 8, 1987; Lazaridis et al.
(Lazaridis), U.S. Patent 4,990,610, issued February 5, 1991,
from an application filed December 16, 1988; Bristol et al.
(Bristol), U.S. Patent 4,361,567, issued November 30, 1982;
Mitsuhashi
et al. (Mitsuhashi), U.S. Patent 4,812,444, issued March 14,
1989; and The Merck Index, Ninth Edition, Merck & Co., Inc.,
Compound Nos. 1832, 4675, 7360, and 8283, pages 23, 630, 985,
1103 and 1104, (1976).
Claims 1 and 23 are representative of the subject matter
claimed and read:
1. A method of treating a patient suffering from an
aphthous ulcer, the method comprising
administering
to said patient a topical preparation containing
sucralfate as an essential ingredient, wherein:
(a) the sucralfate is admixed with an aqueous
carboxypolymethylene medium containing
polysorbate 80 and simethicone, said medium
Appeal No 94-2912
Application 07/752,831
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being added to said sucralfate in an amount
sufficient to form a paste;
(b) the mixture is allowed to dry; and
(c) the resulting material is dispersed in an
aqueous methylcellulose medium;
and wherein said preparation is topically applied
to said aphthous ulcer in and amount sufficient to
cover said aphthous ulcer.
23. A process of preparing a pharmaceutical preparation
for treatment of an aphthous ulcer, the process
comprising:
(a) triturating sucralfate powder with an aqueous
mixture of carboxypolymethylene, polysorbate-80
and simethicone to form a substantially
homogenous mixture, said aqueous mixture being
added to said sucralfate in an amount
sufficient to form a paste;
(b) allowing said substantially homogenous mixture
to dry into a gelatinous material; and
(c) mixing said gelatinous material with an aqueous
methylcellulose medium to form a preparation for
topical application to said aphthous ulcer.
We have reviewed appellants’ specification for everything
that it teaches persons having ordinary skill in the art. We
have considered appellants’ examples and all of the claims.
We have studied the combined teachings of the prior art cited
and applied against appellants’ claims. We have reviewed the
Declaration of David W. Pehrson, filed December 3, 1992,
Appeal No 94-2912
Application 07/752,831
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Appellants’ Brief on Appeal, and the Examiner’s Answer.
Having considered and weighed all the evidence of record
favoring patentability and all evidence to the contrary, we
conclude that the inventions appellants claim are patentable
over the cited prior art and reverse the examiner’s rejection
of all pending claims under 35 U.S.C. § 103.
In our view, the examiner’s rejection of Claims 1, 23,
31-33 and 39-41 for obviousness under 35 U.S.C. § 103 results
from an impermissible hindsight reconstruction of the claimed
invention. See In re Gorman, 933 F.2d 982, 987, 18 USPQ2d
1885, 1888 (Fed. Cir. 1991):
It is impermissible . . . simply to engage in a
hindsight reconstruction of the claimed invention,
using the applicant’s [invention] . . . as a template
and selecting elements from references to fill the gaps.
Whether or not we agree with appellants or the examiner
that the specification’s examples and the Declaration of David
W. Pehrson show unexpected results for the full scope of the
subject matter claimed, is immaterial. We hold that the
examiner has not established a prima facie case of obviousness
for the subject matter claimed in view of the combined prior
Appeal No 94-2912
Application 07/752,831
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art teachings of record. Moreover, the arguments presented in
Appellants’ Brief on Appeal are basically sound. We agree
that the poor water-solubility of sucralfate undermines
whatever minimal incentive the cited prior art would have
provided a person having ordinary
skill in the art to make and use sucralfate in association
with the two particular aqueous media employed in the claimed
invention.
REVERSED
Sherman D. Winters )
Administrative Patent Judge )
)
)
Appeal No 94-2912
Application 07/752,831
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)
Michael Sofocleous ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Teddy S. Gron )
Administrative Patent Judge )

Appeal No 94-2912
Application 07/752,831
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Hayes, Soloway, Hennessey & Hage
Susan H. Hage
175 Canal St.
Manchester, NH 03101