Ex Parte RUBIN - Page 14




          to be made.  However, nothing has been called to our attention                
          which would demonstrate that the "immediate release layer" of                 
          claim 1 differs from Conte's first layer or that the "sustained               
          release layer" of claim 1 differs from Conte's second layer.                  
               A fourth argument is that Conte also describes the use of a              
          third layer and that applicant does not require Conte's third                 
          layer.  The problem with applicant's argument is that its claimed             
          formulation "comprises" a first and second layer.  Accordingly,               
          applicant's claim 1 does not exclude the presence of a third                  
          layer, such as Conte's third layer.  Moleculon Research Corp. v.              
          CBS, Inc., 793 F.2d 1261, 1271, 229 USPQ 805, 812 (Fed. Cir.                  
          1986) (phrase "comprising" is a term of art which does not                    
          exclude additional unrecited elements); In re Baxter, 656 F.2d                
          679, 686, 210 USPQ 795, 802 (CCPA 1981) ("comprising" leaves                  
          claim open to the inclusion of any and all additional steps).                 

               C.   Order                                                               
               Upon consideration of the appeal, and for the reasons given,             
          it is                                                                         
                    ORDERED that the examiner's rejection of claims 1 and               
          11-12 as being unpatentable under 35 U.S.C. § 103(a) over Dempski             
          and Conte is affirmed.                                                        








                                        - 14 -                                          





Page:  Previous  3  4  5  6  7  8  9  10  11  12  13  14  15  16  17  Next 

Last modified: November 3, 2007