Appeal No. 2004-0902 Page 4
Application No. 09/780,060
combination of lipids is mixed with aqueous phase by shaking the
suspension, the liposomes that are formed are inherently
multilamellar and have diameters from 100 to 3000 nm. See col.
17, lines 1-5 and “Concise Encyclopedia Chemistry”, p.599. With
respect to the limitation “crystalline lamellar phase” in Claims 1 and
8, this limitation is inherent in the prior art. If the composition of the
instant claims adopt a crystalline lamellar phase either upon
application to the skin or after the penetration into the stratum
corneum, the compositions of Kawada [ ] will inherently behave the
same because they contain the same ingredients as the claimed
compositions. Under the doctrine of “inherency”, prior art may
anticipate a claim if it “inherently” possess all of the elements of the
claimed invention, even if it “did not fully appreciate the uses,
purposes, or properties of the product or process’ created. General
Electric Company v. Hoescht Celanese Corp., 740 F. Supp. 305,
312 (D. De. 1990). With respect to Claims 14, 16, 17, 18 and 19,
the compositions 26 and 27 exemplified in col. 15, are free from all
listed ingredients.
Examiner’s Answer, pages 3-4.
Appellants argue that the examiner’s reasoning that because Kawada
teaches compositions containing some of the same component lipids the
property that the compositions of Kawada adopt a crystalline lamellar phase
upon application to mammalian skin “is both legally insufficient and scientifically
incorrect.” Appeal Brief, pages 3-4.
Appellants assert that the compositions of Kawada are complex mixtures
that just happen to include some of the same components as the claimed
compositions. Moreover, appellants contend, relying on the 132 declaration filed
November 21, 2002, by the inventors, compositions 26 and 27 both contain
cholesteryl sodium sulfate, which does not crystallize to the same extent as
cholesterol. In addition, according to appellants arguments and the declaration,
those compositions also contain oleylamino-octadecane-1,3 diol, which has a
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