Saturday, June 15, 2013

Mixed decision in Ex parte Liang

There is a mixed decision in Ex parte Liang.

The appellant wins on indefiniteness but loses on obviousness.

Of indefiniteness:

“The test for definiteness is whether one skilled in the art would understand the bounds of the claim when read in light of the specification.” Miles Laboratories, Inc. v. Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993).

Appellant contends “that a plain reading of the claims leaves no doubt that the claimed compositions as a whole comprise less than 10% triglycerides.” (App. Br. 5.)

We find that Appellant has the better position. Here, the claim begins with “a composition” and then continues with “wherein said composition comprises less than 10% of triglycerides.” We agree with Appellant that the claim makes it clear that “said composition . . .” is referring to a composition comprising a reverse micelle system. Here the reverse micelle system contains a hydrophilic phase and hydrophobic continuous phase, thus, the triglycerides of the system being hydrophobic molecules would partition into the hydrophobic phase.

We agree with the Appellant‟s position. In a reverse micelle the hydrophobic phase is found on the outside of the micelle, and the hydrophilic phase is on the interior. Just because in most reverse micelle systems the active ingredient is packaged into the interior of the micelle does not make it unclear that Appellant desires to do just the opposite.
We reverse the rejection of claims 1, 4-8, 15, 16, 19, 20, 23-25, and 27-33 under 35 U.S.C. § 112, second paragraph.

Of obviousness

“In United States v. Adams, . . . [t]he Court recognized that when a
patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). (...)

Applying the KSR standard of obviousness to the findings of fact, we agree with the Examiner that the ordinary artisan would have reasonably selected cyclosporin as a hydrophobic drug as taught by Carlsson (FF 4) with the reverse micelle composition as disclosed by Constantinides (FF 1). Carlsson disclosed the production of reverse micelles including cyclosporin, a known hydrophobic drug (FF 4). Constantinides disclosed the production of reverse micelles including therapeutic compounds such as acyclovir, azithromycin, clarithromycin, and dirithromycin (FF 2), compounds that are known to be hydrophobic.

The chemical principle of "like dissolves like" arises:

Appellant fails to identify any evidentiary basis on this record that rebuts the Examiner‟s reasoning that like dissolves like. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (Argument of counsel cannot take the place of evidence).


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