Appeal No. 95-4890
Application 08/035,002
claimed composition, not to the claimed method. In fact, that
statement does not mention claim 11.
The only specific reference to claim 11 in the Examiner’s
Answer is found at page 7. There, the examiner states that
The assertion that claim 11 is directed to
a method and is therefore somehow not
obvious is not found persuasive. The
claimed method is inherent to the claimed
composition because “treating burns or
wounds” with the o/w emulsion ointments
disclosed in the art is within the scope of
the cited art. Contrary to the appellants’
statement, no significant advance in the
treatment of burns and wounds has been
accomplished. For example, no criticality
of the specific concentrations of the
claimed ingredients has been established.
The examiner’s treatment of claim 11 is incomprehensible.
Apparently, the standard applied by the examiner is that “no
significant advance in the treatment of burns and wounds has
been accomplished” (emphasis in original). That, however, is
not the statutory standard of non-obviousness. See 35 USC §
103; Graham v. John Deere Co., 383 U.S. 1 (1966).
In light of the foregoing, it is our judgment that the
patentability of claim 11 has not been properly determined on
this record and that a justiciable issue has not been
presented for review. Accordingly, we vacate the examiner’s
10
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