Appeal No. 2001-1177 Page 15
Application No. 08/781,868
expected to increase the healing properties of the composition,
therefore, the invention as a whole is prima facie obvious. . . .
Examiner’s Answer, page 18.
We reverse this rejection. The examiner characterizes the rejected claims
as directed to a “method of repairing free radical damage.” However, the claims
do not encompass a method of repairing any free radical damage, but are limited
to a “method for enhancing repair from free radical damage to skin as a result of
treatment of the skin with exfoliants, chemosurgery or laser therapy.” This
preamble language constitutes a limitation of the claimed method, because it
excludes from the scope of the claimed method treatment of patients other than
those who have suffered free radical damage to their skin as a result of
exfoliants, chemosurgery, or laser therapy. Thus, although the preamble did not
further limit the composition claims, it does limit the method claims. The
examiner has pointed to nothing in the relied-on references that suggests that
any of the disclosed agents are useful in treating skin damaged by exfoliants,
chemosurgery or laser therapy. Thus, the examiner has not shown that the
methods of claims 45-54 would have been prima facie obvious in view of the
prior art.
Summary
The composition of claim 35 is anticipated by both the claims and
disclosure of Hersh. The composition is also rendered obvious by the
disclosures of N’Guyen and Burke. We, therefore, affirm the rejections of claim
35 for obviousness-type double patenting, anticipation, and obviousness. Claims
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