Appeal No. 1997-2512
Application No. 08/118,905
“Appellants have argued that the difference resides in Whittaker’s use
of a bulb. Appellants have argued that the claimed invention relates to a
facile method of delivery comprising cutting the device. The Examiner
maintains that Whittaker discloses a method of delivering a pharmaceutical
material to an animal via the use of a tube. A means of opening the tube
or straw at one end to dispense the pharmaceutical material is an
inherent property in a method of delivery, therefore the specific means
of opening the tube is not patentable.” (Emphasis added.)
See page 5 of the Answer and page 3 of the final Office action.
We shall not sustain this rejection.
To anticipate a claim, each and every element set forth in the claim must be found,
either expressly or inherently, in a single prior art reference. In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); Verdegaal Bros. v. Union Oil
Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.) cert. denied, 484 U.S. 827
(1987).
Here, a comparison of the subject matter of present claim 12 and Whittaker reveals
that the examiner has failed to set out a prima facie case of anticipation. Starting at
column 1, line 20, Whittaker discloses:
“In accordance with the invention, a dispersible substance, such as a
medicinal fluid or fluffy preparation, that is to be applied to delicate internal
parts of the human body, such as the mouth cavity or nasal cavity of a
person, is enclosed in a tubular container which permits direct discharge of
its contents at the point of its application within the cavity of the body, the
exterior parts of the container which come in contact with delicate interior
parts of the body being kept in clean and sanitary condition and its contents
being sealed and protected against contamination by a removable flexible
coating enclosing the discharge portion of the container.
As shown in Fig. 1 the dispensing unit comprises a cylindrical tube 10
of glass or similar material having at its front end a restricted discharge
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