Appeal No. 2005-1431
Application 09/442,070
The district court held that "Rosenthal, Munro (incorporating Rosenthal by reference),
and the Haywood and Heymann article all disclose the use of Rosenthal compositions which
include a gel including a pharmaceutically acceptable neutral salt of a carboxypolymethylene
polymer," 924 F.Supp. at 1115, 39 USPQ2d at 1979 (emphasis added), and concluded that
"because none of the prior art references disclose the use of a composition containing slightly
acidic vinyl polymer with active carboxyl groups, none anticipate claim 1 of the '303 patent." Id.
at 1115, 39 USPQ2d at 1979-80.
The Federal Circuit held the district court's construction of the Rosenthal disclosure to be
erroneous:
Although Rosenthal states that a neutralized salt of carboxypolymethylene is the
preferred form of the polymer, the disclosure of Rosenthal is not limited to the
neutralized salt. Rather, the patent refers to carboxypolymethylene in general as
the thickening agent for the claimed composition. The district court thus erred by
construing the scope of the Rosenthal disclosure as limited to the preferred
embodiment.
127 F.3d at 1068, 44 USPQ2d at 1339. In addition, as pointed out by appellants in the instant
appeal, the court rejected Ultradent's argument that Munro's incorporation by reference of
Rosenthal is limited to Proxigel, Rosenthal's commercial embodiment:
The Munro patent incorporates by reference the entire contents of the Rosenthal
disclosure. Ultradent's assertion that Munro "says nothing" about the Rosenthal
compositions and merely discloses using the commercial embodiment of the
Rosenthal patent is contrary to the rules of practice, which permit incorporation of
prior art by reference. See United States Department of Commerce, Patent and
Trademark Office, Manual of Patent Examining Procedures § 608.01(p) (6th ed.
1996) (discussing incorporation-by-reference procedures).
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