Appeal No. 2005-0112 Page 5
Application No. 09/737,004
Appellant, there is a reason, suggestion or motivation for preparing the composition as is
required to establish a prima facie case of obviousness.
We also agree with the Examiner that the words in the preamble of the claim “for
cleaning and wetting a contact lens” are merely a statement of intended use (Answer, pp. 3-4).
“A mere statement of a new use for an otherwise old or obvious composition cannot render a
claim to the composition patentable.” In re Zierden, 411 F.2d 1325, 1328, 162 USPQ 102, 104
(CCPA 1969).
In the Reply Brief, Appellant argues that Hu does not teach compositions containing the
components of the claim and bases this argument on a comparison of what Hu requires to
achieve the stated result of the reference to what Appellant requires to achieve her stated result
(Table 1) (Reply Brief, pp. 2-3). But Appellant’s Table 1 does not make a proper comparison
because it neglects the fact that Hu’s ethoxylated glucose derivative meets the requirements of
component (a), Hu’s poloxamine meets the requirements of component (b), Hu’s polysorbate 20
meets the requirements of component (c) and Hu’s cellulosic polymers meet the requirements of
component (d). Hu suggests a composition containing all of the claimed components.
With regard to Heiler, Appellant argues that the inventive compositions have been
proven effective in removing lens deposits without polyquaternium polymers to block protein
deposits (Brief, pp. 9-10). But, as pointed out by the Examiner, the presence of polyquaternium
polymers is not excluded by the claims (Answer, p. 4). Nor can we agree with Appellant that the
description in Heiler of including polyquaternium polymers as active ingredients to prevent the
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