Ex parte RHODES et al.

Board of Patent Appeals and Interferences

Apr 30, 1998

07966163 (B.P.A.I. Apr. 30, 1998)

Application for patent filed January 21, 1993. This1
application is a national stage application under 35 U.S.C. § 371
of PCT/GB91/01209 filed July 19, 1991.
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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journal and (2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOHN RHODES and BRIAN K. EVANS
________________
Appeal No. 95-4824
Application 07/966,1631
________________
ON BRIEF
________________
Before WARREN, ELLIS and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-3, 29-39, 41-44 and 46-48, which are all of the claims
remaining in the application.
Appeal No. 95-4824
Application 07/966,163
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THE INVENTION
Appellants claim a bismuth-containing complex which,
appellants state, is useful for treating conditions of the
alimentary canal (specification, page 1, lines 6-9). A method
for making the complex also is claimed. Claims 1 and 41 are
illustrative and read as follows:
1. A water soluble complex of bismuth with a polyacrylate.
41. A process for the preparation of a water-soluble
complex of bismuth and a polyacrylate comprising reacting a
bismuth-containing compound with a polyacrylate in a liquid
phase.
THE REFERENCES
Coveney et al. (Coveney) 4,940,695 Jul. 10, 1990
Borody 5,196,205 Mar. 23, 1993
(PCT filing date Sept. 29, 1988)
Lloyd-Jones et al. (Lloyd-Jones) 2,220,855 Jan. 24, 1990
(United Kingdom patent application)
THE REJECTIONS
Claims 1-3, 29-39 and 41 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Coveney in view of Lloyd-Jones.
Claims 42-44 and 46-48 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Borody in view of Lloyd-Jones.
Appeal No. 95-4824
Application 07/966,163
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OPINION
We have carefully considered all of the arguments advanced
by appellants and the examiner and agree with appellants that the
aforementioned rejections are not well founded. Accordingly,
these rejections will be reversed.
Coveney discloses bismuth-containing pharmaceutical
compositions which are suitable for oral administration and which
coat the gastrointestinal tract (col. 1, lines 59-63). The
compositions include from about 0.1% to about 50% of a
pharmaceutically-acceptable bismuth-containing agent, from about
0.1% to about 25% of a pharmaceutically acceptable non-ionic
cellulose ether polymer, and from about 0.1% to about 25% of
magnesium aluminum silicate, wherein the ratio of bismuth to non-
ionic cellulose ether polymer is greater than about 1.5:1 (col.
1, line 63 - col. 2, line 3). The compositions are useful for
treating or preventing disturbances of the gastrointestinal
tract, such as diarrhea, nausea, heartburn, indigestion, upset
stomach, gastritis and ulcers (col. 2, lines 6-8; col. 6, lines
10-30).
Appeal No. 95-4824
Application 07/966,163
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Lloyd-Jones teaches that it was known in the art to use
polyacrylates to treat peptic ulcers (page 1, line 8 - page 2,
line 19), and discloses use of polyacrylates to treat
inflammatory bowel disease (page 5, lines 24-26; page 6, lines 6-
9).
Borody discloses a pharmaceutical composition for treating
gastrointestinal disorders associated with C. pylori infections,
which comprises a pharmaceutically acceptable bismuth compound, a
first antibiotic or antimicrobial agent, and a second antibiotic
or antimicrobial agent (col. 1, line 65 - col. 2, line 2; col. 2,
lines 27-33). In a preferred embodiment, a capsule is provided
which contains an effective amount of a pharmaceutically
acceptable bismuth compound, enteric-coated microspherules of an
antibiotic of the tetracycline class or penicillin class, and a
second antibiotic of the metronidazole class, which optionally is
provided in enteric-coated microspherule form (col. 3, lines 38-
46).
The examiner argues that it would have been obvious to one
of ordinary skill in the art to combine a bismuth-containing
compound of either Coveney or Borody with a polyacrylate of
Lloyd-Jones in order to obtain an additive effect (answer, pages
4-5). Regarding the recitation in appellants’ claims that the
Appeal No. 95-4824
Application 07/966,163
Gessner G. Hawley, The Condensed Chemical Dictionary (10th2
ed., Van Nostrand Reinhold 1981); McGraw-Hill Dictionary of
Scientific and Technical Terms (2d ed., McGraw-Hill 1978).
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material is a complex, the examiner states that “a complex is
considered to be a mixture of interconnected parts or
ingredients. The Examiner sees the complex as a mixture of
bismuth or bismuth-containing ingredients combined with
polyacrylates to treat inflammatory bowel diseases” (answer, page
6).
Appellants provide (brief, page 7) a definition of “complex”
from Collins Dictionary (2d ed. 1986), which is:
... a chemical compound in which molecules, groups
or ions are attached to a central metal atom, esp. a
transition metal atom, by coordinate bonds. 9. any
chemical compound in which one molecule is linked to
another by a coordinate bond.
This definition is consistent with that in two other
dictionaries. Accordingly, we interpret appellants’ claims as2
requiring that the polyacrylate be attached to the bismuth by
coordinate bonds.
The examiner has not carried his burden of establishing a
prima facie case of obviousness of appellants’ claimed invention
Appeal No. 95-4824
Application 07/966,163
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because he has not provided evidence which shows either of the
following:
1) That merely mixing a bismuth-containing compound and a
polyacrylate results in the formation of a complex between the
polyacrylate and bismuth. Appellants state in their
specification that stirring a mixture of a bismuth-containing
compound and a polyacrylate at 40EC usually will produce a
complex within 24 hours (page 3, lines 20-22). Appellants’
claims do not require any minimum degree of complex formation,
but the examiner has provided no evidence that any formation of
coordinate bonds between a polyacrylate and bismuth would take
place during the mere mixing of a bismuth-containing compound and
a polyacrylate.
2) That the prior art would have fairly suggested, to one of
ordinary skill in the art, mixing a bismuth-containing compound
with a polyacrylate under conditions which cause the formation of
coordinate bonds between the polyacrylate and bismuth.
DECISION
The rejections under 35 U.S.C. § 103 of claims 1-3, 29-39
Appeal No. 95-4824
Application 07/966,163
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and 41 over Coveney in view of Lloyd-Jones, and claims 42-44 and
46-48 over Borody in view of Lloyd-Jones, are reversed.
REVERSED
JOAN ELLIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 95-4824
Application 07/966,163
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WARREN, Administrative Patent Judge, Concurring:
I agree with the panel’s decision to reverse the decision of
the examiner since I find that neither ground of rejection
focuses on appellants’ claimed invention, that is, “[a] water
soluble complex of bismuth with a polyacrylate,” even though
Lloyd-Jones specifically discloses that “[b]y polyacrylate we
mean polyacrylic acid and its pharmaceutically acceptable salts”
(page 5; emphasis supplied). Compare In re Jones, 958 F.2d 347,
349-51, 21 USPQ2d 1941, 1942-44 (Fed. Cir. 1992).
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
Appeal No. 95-4824
Application 07/966,163
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