Appeal No. 2003-0984 Page 4
Application No. 09/418,825
combination in the manner claimed.’” Ecolochem, Inc. v. Southern Calif. Edison Co.,
227 F.3d 1361, 1375, 56 USPQ2d 1065, 1075 (Fed. Cir. 2000)
Here, the examiner’s statement of the rejection leaves a great deal to conjecture.
All of the claims on appeal stand rejected as unpatentable over the combined teachings
of Katz and Petersen, but it appears that the examiner believes that Katz anticipates
the limitations of all of the claims with the exception of those claims drawn to methods
of use or kits. According to the examiner, Katz is only “deficient in the fact[ ] that it does
not include a kit and method of application in the invention” (Answer, page 4), and “[i]t
would have been obvious to one having ordinary skill in the art . . . to modify the
transdermal drug delivery system disclosed by Katz [ ] by including the patch and the
solvent in a kit and devising a method of administration according to the teachings of
Petersen . . . to prevent loss of the active substance and facilitate penetration into the
skin” (Answer, page 5).
Nevertheless, appellant argues that, unlike the drug in the claimed patches, the
drug in Katz’s patch “is always suitable for migrating through the matrix without the
addition of liquid to the patch” because the enhancer, which “dissolves the drug for
transport of the drug from the patch to the skin,” “is part of the patch . . . upon
manufacture” (Brief, page 7). In addition, appellant argues that “Katz does not suggest
that [the patch’s] backing material[ ] should be porous or capable of containing a liquid
suitable for dissolving an active substance, as in the patches of all of the rejected
claims” (Brief, page 7).
It may or may not be that Katz’s active substance is contained in the matrix in
such a way that it is not suitable for migrating (unless and until it is contacted by the
enhancer). We need not resolve this issue, however, because all of the claims on
appeal also require a porous backing “capable of containing a liquid suitable for
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