Appeal No. 2006-1253 Page 6
Application No. 09/969,451
reducing agent useful in Apelian’s composition “include: ethanol and propylene
glycol.” See also, the compositions set forth in Apelian’s examples 2 and 4.
While appellants include ethanol in the claimed composition as a
preservative, Apelian used ethanol as a viscosity reducing agent. In this regard,
we remind appellants that appellants’ use of ethanol for a different purpose than
Apelian does not alter the conclusion that its use in appellants’ composition
would have been prima facie obvious from the purpose disclosed in Apelian. In
re Linter, 458 F.2d 1013, 1007, 173 USPQ 560, 562 (CCPA 1972).
Accordingly, we are not persuaded by appellants’ argument.
Claim 29:
According to appellants (Brief, page 5), Apelian teaches (column 1, lines
26-31, and column 2, lines 2-5) that intramuscular administration of a formulation
of florfenicol and greater than 30% N-methyl-2-pyrrolidone causes injection site
irritation and tissue damage. For this reason, appellants assert that claim 29 is
not obvious in view of Apelian. Id.
As we understand appellants’ argument, there is no dispute that Apelian
teach a composition that is within the scope of appellants’ claimed invention.
Instead, appellants assert that since Apelian teaches that their composition may
have unsatisfactory results, Apelian teaches away from appellants’ composition.
We disagree. As set forth in Ex parte Thumm, 132 USPQ 66, 67-68 (Bd. App.
1960),
if applicant’s claims read directly on what is disclosed in the prior
art, such claims cannot be allowed even though the prior art
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