Appeal No. 2004-1731 Page 6
Application No. 09/524,113
serving as the digestible oil component…” of Lacy’s invention meet the oil
limitation set forth in appellants’ claim 1.
Thus, we agree with the examiner that Lacy teaches a composition
consisting essentially of a fibrate (fenofibrate), dissolved in at least one oil, with
one emulsifier (castor oil or hydrogenated castor oil ethoxylates), as set forth in
appellants’ claim 1, that would form an emulsion upon dilution with an aqueous
phase. We are not persuaded that the components set forth in the invention of
Lacy are different from the components set forth in appellants’ claimed invention
simply because they use different descriptors5, or because appellants’ claim
does not require the emulsifier to exhibit or demonostrate the property of not
essentially inhibiting the lipolysis of oil as described in Lacy’s disclosure (e.g.,
column 3, lines 50-55.
On reflection, we find no error in the rejection of record. Accordingly, we
affirm the rejection of claim 1 under 35 USC §103(a) as being unpatentable over
Lacy. As discussed supra claims 3, and 7-12 fall together with claim 1.
Claim 19:
As illustrated above, claim 19 differs from claim 1 only by the use of a
different transitional phrase in the preamble - “consisting of” (claim 19) vs.
“consisting essentially of” (claim 1). Appellants’ only argument with regard to
claim 19 is to explain the difference between the transitional phrases “consisting
of” and “consisting essentially of”. See Brief, page 3. While we agree with
appellants’ explanation of the difference between these two transitional phrases,
5 For example, Lacy’s use of the term hydrophilic surfactant vs. appellants’ use of the term
emulsifier, to describe castor oil or hydrogenated castor oil ethoxylates.
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