Appeal No. 96-2897
Application 08/050,315
First, the claimed “composition” is defined as being
useful “for the treatment of the upper epidermal layers of the
skin” (Claim 36, l. 1-2). The examiner held that the claim
language of utility does not further limit the claimed
invention (Ans., p. 4, last para.) and therefore cannot2
exclude nonbiodegradable nanocapsules containing an “active
oil” such as “benzyl benzoate” which the prior art reference
encapsulated in nanocapsules made of a nonbiodegradable
copolymer of vinyl chloride and vinyl acetate (Ans., p. 4,
third para., and Devissaguet, col. 5, Example 1). Appellants
cited a standard chemical reference which indicated that
benzyl benzoate “[m]ay cause skin irritation in humans” (The
Merck Index, Eleventh Edition, Merck & Co., Inc., Rahway,
N.J., p. 176, no. 1141 (1989)(Appeal Brief (Br.), Appendix B))
and argued that persons having ordinary skill in the art would
not have understood that encapsulated skin irritants would be
useful “for the treatment of the upper epidermal layers of the
skin” as are the compositions appellants claim. Thus,
Elimination of the need for fact-specific analysis2
of claims and prior art by reliance on per se rules in
determining patentability is legally incorrect. In re Ochiai,
71 F.3d 1565,
1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995).
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