Appeal 2007-0625
Application 09/969,299
R4 are independently selected from the group consisting of H,
OH, COOH, and -C(O)R9; R9 is hydrogen or a monovalent
saturated or unsaturated aliphatic hydrocarbyl moiety,
wherein the first active ingredient is effective in inhibiting
the production of exoprotein from Gram positive bacteria.
The Examiner has rejected claims 1, 4-6, 10, 16-21, 23-46, 48-60, 62-
78, 80-89, 91-101, and 103-106 under 35 U.S.C. § 102(b) based on Trinh et
al, U.S. Patent No. 5,668,097, issued Sept. 16, 1997 (“Trinh”).
The Examiner has also rejected claims 1, 4-6, 10, 16-21, 23-46, 48-60,
62-78, 80-89, 91-101, and 103-106 under 35 U.S.C. § 103(a) based on Trinh
and Brown-Skrobot, U.S. Patent No. 5,753,252, issued May 19, 1988
(“Brown-Skrobot”).
ANTICIPATION UNDER § 102(b)
The § 102(b) Issue
Appellants contend Trinh does not anticipate claim 1 because Trinh
does not disclose a “catamenial tampon comprising an absorbent tampon
material,” as recited in the claim. (Substitute Appeal Brief (filed Nov. 9,
2006) (“Br.”) 14.)
The Examiner responds “the recitation of catamenial tampon has not
been given patentable weight because the recitation occurs in the preamble.”
(Supplemental Examiner’s Answer (mailed Oct. 3, 2006) (“Ans.”) 6.)
Further, with respect to the “absorbent tampon material” claim language,
“the word ‘tampon’ does not provide any per se structural limitation,”
implying this language is merely an expression of an intended use. (Id. at 7.)
Given these contrary positions, the issue before us is: Does Trinh, a
reference that does not disclose a tampon, anticipate Appellants’ claim 1, or
does the claim language require the disclosure of a tampon?
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013