Appeal No. 2006-0760
Application No. 10/312,417
Appellant argues that “Levin contains no examples which clearly,
unequivocally and simultaneously contain all of the requisite elements of the
Appellant’s claimed invention, i.e. (1) being a dermal system and (2)
containing” celecoxib and rofecoxib (Br. 5). He acknowledges that “specific
examples may not be necessary to establish anticipation,” but (citing In re
Petering, 301 F.2d 676, 133 USPQ 275, 278 (CCPA 1962) argues that “this
is generally limited to situations where the scope of the embodiments of the
inventions are so few in number such that one of ordinary skill in the art
could envisage every embodiment of the invention.” (Br. 5.) Because of the
generality of Levin’s disclosure, he urges that selection of two specific
COX-2 inhibitors for transdermal delivery as recited in claim 13 would have
required “one of ordinary skill in the art . . . to resort to the type of picking
and choosing which is precluded” in a rejection based on anticipation (Br.
7).
An anticipating “reference must describe and enable the claimed
invention, including all claim limitations, with sufficient clarity and detail to
establish that the subject matter already existed in the prior art and that its
existence was recognized by persons of ordinary skill in the field of the
invention.” Crown Operations International, Ltd. v. Solutia Inc., 289 F.3d
1367, 1375, 62 USPQ2d 1917, 1921 (Fed. Cir. 2002); In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) (“the reference must
describe the applicant's claimed invention sufficiently to have placed a
person of ordinary skill in the field of the invention in possession of it”).
Transdermal and topical delivery are listed by Levin among ten
different routes of administration for its compositions (at 11, pp. 15-17).
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