Appeal No. 1997-3019
Application No. 08/404,122
relied on in the manner proposed by the examiner. Accordingly, all three of the rejections
of the claims under 35 U.S.C. § 103 are reversed.
AN ADDITIONAL MATTER
It is axiomatic that one cannot patent what is old. “The discovery of a new property
or use of a previously known composition, even when that property and use are unobvious
from the 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) (citations omitted).
The composition of claim 10, unlike the compositions of claims 1 through 8, does
not require an antigenic component, nor does it require a specific amount of either
component of NAGO or a specific ratio of the two components. While the recitation “[a]
vaccine adjuvant” does impose a functional limitation on the claimed composition, the
limitation is simply that the composition is capable of functioning as a vaccine adjuvant, not
that it is actually used as such.
According to the specification (page 2), compositions comprising neuraminidase
and galactose oxidase (NAGO) are known in the art; indeed, several references of record
4
describe such compositions. The specification further teaches that the ratio of
neuraminidase to galactose oxidase in vaccine adjuvants should be from 1:2 units of
activity to 1:10 units of activity, while the amount of neuraminidase per 100 µl of material
for injection may be from 0.05 to 12 units, and the amount of glucose oxidase per 100 µl of
4Lipkowitz, Rhodes and Gao, for example.
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