Appeal No. 2001-1177 Page 5
Application No. 08/781,868
by the composition of Hersh’s claim 1 and a rejection for obviousness-type
double patenting is appropriate. See Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d
955, 968, 58 USPQ2d 1869, 1878 (Fed. Cir. 2001) (“A later . . . claim is not
patentably distinct from an earlier patent claim if the later claim is obvious over,
or anticipated by, the earlier claim.”). See also In re Goodman, 11 F.3d 1046,
1053, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993) (“[The application claims] are
generic to the species of invention covered by claim 3 of the patent. Thus, the
generic invention is ‘anticipated’ by the species of the patented invention. This
court’s predecessor has held that, without a terminal disclaimer, the species
claims preclude issuance of the generic application.” (citation and footnote
omitted)).
Appellant argues that “[a]lthough the composition of applicant’s own ‘791
patent and those described herein are similar, they are used for a different
purpose. . . . From a compositional standpoint, the amounts of ingredients
oftentimes vary as well as the type of carrier as the intended purpose for these
compositions are completely unrelated.” Appeal Brief, page 6.
This argument is not persuasive. It is true that the patent’s claims are
directed to a “composition for protection from x-ray induced skin damage,” while
the instant claims are directed to a “composition for enhancing repair from free
radical damage to skin as a result of treatment of the skin with exfoliants,
chemosurgery or laser therapy.” The difference in the preambles of the claims,
however, merely reflects the intended use of the compositions. The preamble
language therefore does not distinguish the patented composition from that of the
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