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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