Appeal No. 2006-2546 Page 4
Application No. 10/425,177
Examiner’s Answer, pages 3-4. At column 3, lines 1-19, Krezanoski describes a
composition comprising “from about 10% to about 26%” by weight polyoxyethylene-
polyoxypropylene block copolymer and “from about 74% to about 90%” by weight water.
In addition, the examiner argued that “[t]he pharmaceutical composition of
Krezanoski contains pharmaceutically active drug or medicament material (column 3,
lines 37-47) [and] further contains various additives such as auxiliary non-ionic
surfactants, salts to adjust osmotic pressure, buffer systems to control pH, and
preservatives (column 3, lines 20-31).” Examiner’s Answer, page 4. The examiner
reasoned that “[t]he additive of Krezanoski meets the broad limitation of the claimed
additive.” Id. Specifically, the examiner argued that “the recitation of ‘to provide a
detection of the gel inside the target breast milk duct’ is an intended use of the additive
and future intended use of a component in a composition is not given patentable
weight.” Examiner’s Answer, page 3.
Appellants argue that the additive of claim 10 “is not merely ‘an additive’ but is an
additive that has the capacity to ‘provide detection of the gel inside the target breast
milk duct.’” Appeal Brief, page 4. “Nowhere in Krezanoski is there any mention of an
additive to aid in the detection of a breast duct.” Appeal Brief, page 5.
We agree with Appellants that the examiner has failed to set forth a prima facie
case that Krezanoski describes a composition comprising “an additive to provide
detection of the gel inside the target breast milk duct.” In particular, we do not agree
with the examiner that the phrase “to provide detection of the gel inside the target breast
milk duct” is merely an intended use of the additive. Instead, we conclude that this
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