Appeal No.1997-0466
Application 08/154,158
effective amount are within the skill of the practitioner. Answer, page 4. The examiner
finds that Pinnell evidences that suitable amounts of enzymes required for dilution of
mammalian cicatrices will be varied and can be determined based on the nature of the
cicatrix being treated, the concentration of enzymes in the solution, the types of enzymes
being used, the amount, location and nature of the fibers to be dissolved, as well as the
nature of the tissue adjacent to the cicatrix being treated. Pinnell, column 4, lines 46-56.
Based on this disclosure in Pinnell, the examiner concludes it is well within the skill of one
of ordinary skill in the art to optimize the amounts of enzyme components for the particular
and individual area to be treated. Answer, page 10.
The examiner properly recognizes that the recitation of a new intended use for an
old product does not make a claim to that old product patentable. "The discovery of a new
property or use of a previously known composition, even when that property and use are
unobvious from prior art, can not impart patentability to claims to the known composition."
In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Intended use
of an old composition does not render composition claims patentable. In re Pearson, 494
F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974). However, due to differences in
claimed hyaluronidase enzyme concentrations, we do not find the claimed composition to
be a new use of an old product, the product disclosed in Pinnell.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007