Appeal No. 1997-2336
Application No. 08/256,065
glycerol ester of a partially hydrogenated colophonium and
dioctyl cyclohexane dissolved in n-heptane, and silicone oil.
This portion of claim 27 was added by amendment filed June 6, 1996 (Paper No. 15) to
replace matter previously canceled. Appellants indicate at page 2 of that paper, that "[t]he3
amendment to claim 27 is to insert the Markush group of substances that preclude or
greatly reduce hydrolysis of acetyl salicylic acid." We find no written description, in the
application as filed, of the members of the Markush group of claim 27 as being substances
that preclude or greatly reduce hydrolysis of acetyl salicylic acid in the transdermal patch.
The individual members of this group are named in the examples but there is no explicit
statement of their function. We contrast this lack of description of these substances with
the explicit statement at page 7 of the specification which states:
For reducing or suppressing the hydrolysis, substances may
be added such as acylating agents, preferably acetylating
agents, and, in particular, acetic anhydride, . . .
Further, we compare claim 1 of co-assigned U.S. Patent 5,861,170 to Kissel wherein the
members of the Markush group of claim 27 are designated as "solvents" rather than as
hydrolysis suppressing agents. The members of the Markush group of claim 27 are
3Similar terminology was initially added to claim 27 by amendment filed May 25, 1995 (Paper No.
7) in response to the first Office action. In the subsequent final rejection, the examiner rejected the claim
as directed to subject matter which lacked antecedent basis in the application as filed for the description of
the Markush group of substances as providing hydrophobic adjustments. This terminology was canceled
from claim 27, as well as the other claims in which it appeared, by amendment filed April 8, 1996. (Paper
No. 11). Claim 27 was subsequently amended at the time of the filing of the Appeal Brief to reintroduce the
noted language. (Paper No. 15). While not explicitly stated in the record, the examiner's initials appear on
this amendment authorizing entry thereof. Further, the Examiner's Answer, at page 2, indicates that the
copy of the claims attached to the Appeal Brief, which included the cited language, was correct.
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