Appeal No. 2005-0403 Page 3
Application No. 09/748,466
In response appellants argue (Brief, pages 5-6),
Hinson discloses a topical emollient containing a source of
glucose and insulin for the treatment of circulation induced lesions
(Hinson, abstract). The circulation induced lesions, such as skin
lesions, ulcers and maladies, are a pathologic result caused by
diabetes, phlebitis, or other circulatory problems (Hinson, col. 1,
lines 12-35).
In contrast, the method of the presently claimed invention
includes applying the composition of the present invention to skin or
scalp, not skin lesions, skin ulcers, or skin maladies. Skin lesions,
skin ulcers, and skin maladies as defined in Hinson are not
encompassed by the definition of skin as used in the present
application. For example, the term “wounds” which includes
lesions, is considered separate and distinct from skin at page 6,
lines 11-15, of the specification.
In response, the examiner asserts (Answer, page 4) that he was unable to
identify a “clear” definition of the term “skin” as it is used in appellants’
specification. To the contrary, with reference to pages 2-3 of appellants’
specification the examiner finds (Answer, page 4), “the specification lists wound
treatment and skincare in diabetic patients as possible uses of insulin and does
not distinguish between treating ‘pathological’ and ‘physiological’ changes in the
skin.” According to the examiner (page 5), “[t]he fact that Applicant may have
discovered yet another beneficial effect from the method set forth in the prior art
does not mean that they are entitled to receive a patent on that method.” We
agree. It is well established that merely discovering and claiming a new benefit
of an old process cannot render the process again patentable. See In re
Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Thus,
we agree with the examiner (Answer, page 5), appellants’ discovery that the
topical application of a composition, consisting essentially of insulin, to skin
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