Appeal No. 2002-0663 Page 3
Application No. 09/504,963
A mere statement of a new use for an otherwise old or obvious
composition cannot render a claim to the composition patentable.
As we said in In re Lemin, 51 CCPA 942, 326 F.2d 437, 140 USPQ
273, 276 (1964),
Appellants are clearly correct in demanding that the subject
matter as a whole must be considered under 35 U.S.C. 103.
But in applying the statutory test, the differences over the
prior art must be more substantial than a statement of the
intended use of an old composition. … It seems to us that
the composition … would be exactly the same whether the
user were told to cure pneumonia in animals with it … or to
promote plant growth with it (as here). The directions on the
label will not change the composition….
Therefore, we will not entertain any further discussion regarding the intended use
of the claimed composition.
In addition, the claimed composition requires the presence of “a water-
based deodorizing agent having semi-rigid, concave molecular structures which
capture odor-causing molecules.” As set forth in appellant’s specification (page
2-3), this deodorizing agent is Ordenone®.
DISCUSSION
Claims 1-4 and 6-8:
According to the examiner (Answer, pages 3-4), Walters disclose a
“working deodorant comprising ethyl alcohol (volatile solvent or carrier), water
(non-volatile solvent and/or carrier), sodium stearate (solubilizing agent),
propylene glycol (solubilizing agent) and soyaethyl morpholinium ethosulfate….”
The examiner finds that the reference differs from the claimed invention in that
Walters does not teach a composition comprising Ordenone® or benzethonium
chloride. Answer, page 4.
The examiner relies on Belle-Aire to teach Ordenone®. Answer, pages
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