Appeal No. 2001-1177 Page 7
Application No. 08/781,868
limitation positively recited in a claim must be given effect in order to determine
what subject matter that claim defines. However, recitation, in a claim to a
composition, of a particular property said to be possessed by the recited
composition, be that property newly-discovered or not, does not necessarily
change the scope of the subject matter otherwise defined by that claim.” In re
Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970). “It is well settled
that the recitation of a new intended use for an old product does not make a
claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477, 44
USPQ2d 1429, 1431 (Fed. Cir. 1997).
In this case, we agree with the examiner that Hersh anticipates the
composition claims of the present application. Hersh discloses compositions
comprising glutathione and selenoamino acids (e.g., selenomethionine) for
topical treatment of skin. See, e.g., column 13, line 50 to column 14, line 26. As
discussed above, Hersh’s exemplary “reparative cream” appears to be identical
to the working example in the present specification. Hersh’s reparative cream
composition comprises 0.03% glutathione and selenomethionine, the same
concentration of these ingredients used in the working examples of the present
specification. Thus, the prior art compositions appear to comprise glutathione
and a selenoamino acid “in amounts suitable for enhancing repair of skin from
free radical damage,” as required by the present claims. Claims 35-44 are
anticipated by Hersh.
We do not find, however, that Hersh anticipates the method claims of the
present application. Hersh does not teach using the disclosed compositions to
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