Ex parte HAYNES et al. - Page 10




          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                
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