Ex parte AHLUWALIA et al. - Page 6




                    Appeal No. 1997-1717                                                                                                                                  
                    Application No. 08/068,256                                                                                                                            

                                             II.       Remand to Consider U.S. Patent No. 5,928,654                                                                       

                              On June 9, 2000, appellants filed a communication identifying a number of                                                                   
                    references that should be brought to the examiner’s attention (Paper No. 29).                                                                         
                    U.S. Patent No. 5,928,654 to Duranton (Duranton) is cited among those references.  This                                                               
                    patent is directed to the conjoint use of a lipoxygenase inhibitor and a cyclooxygenase                                                               
                    inhibitor in a process for reducing hair growth (see Duranton, claim 1).  The claims under                                                            
                    appeal, written in open language, would appear to “read on” the subject matter set forth in                                                           
                    the claims of Duranton.  In addition, Duranton appears to disclose a number of appellants’                                                            
                    preferred lipoxygenase inhibitors (Duranton, col. 4, lines 26-32, 51-59).                                                                             
                              We note that Duranton was filed on April 14, 1997, almost four years after the filing                                                       
                    date of this application.  Thus, Duranton is not prior art against appellants.  Appellants                                                            
                    argue that the claims in Duranton were not rejected on the grounds advanced against their                                                             
                    claims.  Appellants argue, therefore, that there has been an apparent inconsistency in the                                                            
                    way applications drawn to similar subject matter have been prosecuted.                                                                                
                              In light of our reversal of the rejection of claims 1 and 8 through 12 under         35                                                     
                    U.S.C.  103, and in light of the issuance of U.S. Patent No. 5,928,654, we remand this                                                               
                    application to the examiner so that he may compare the two sets of claims and take further                                                            
                    action as deemed appropriate.  A copy of U.S. Patent No. 5,928,654 is enclosed with the                                                               
                    opinion.                                                                                                                                              





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