Appeal No. 2006-1253 Page 7
Application No. 09/969,451
teaches unsatisfactory results whereas the applicant demonstrates
successful results. It is elementary that the applicant’s claims must
define something specifically different from what is explicitly taught
by the prior art and the change must not be an obvious one.
Further, to the extent that appellants would assert that they have discovered a
new benefit for Apelian’s composition, e.g., one that does not cause tissue
damage or irritation upon intramuscular injection, we note that merely discovering
a new property of a previously known composition cannot impart patentability to
claims to the known composition. In re Spada, 911 F.2d 705, 708, 15 USPQ2d
1655, 1657 (Fed. Cir. 1990).
Accordingly, we are not persuaded by appellants’ argument.
Claim 37:
According to appellants (Brief, page 6), “the [e]xaminer has provided no
suggestion or motivation for administering via syringe to an animal an antibiotic
formulation consisting essentially of florfenicol, a preservative, and N-methyl-2-
pyrrolidone, . . .” as set forth in appellants’ claim 37. In this regard, appellants
assert that since Apelian discloses (column 2, lines 2-5) that “[c]ompositions
containing above 30% by weight N-methyl-2-pyrrolidone solvent may cause
injection site irritation and tissue damage upon intramuscular injection in cattle,”
“Apelian teaches away from intramuscularly administering” appellants’ claimed
formulation. For these reasons appellants assert (id.), claim 37 is not obvious
over Apelian. We disagree.
Apelian discloses injectable compositions with “good syringeability over a
wide temperature range and ease of processing.” Accordingly, we disagree with
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