Appeal No. 2006-2546 Page 8
Application No. 10/425,177
containing those types of polymers will undergo the gel transition recited in the claims.
For example, the fact that Appellants are claiming compositions containing polyethylene
oxide does not provide a reasonable basis to conclude that all compositions containing
polyethylene oxide undergo the gel transition recited in the claims.
In particular, the examiner has not provided a reasonable basis on which to
conclude that any composition containing polyalkylene oxide described in Snow will
necessarily undergo the gel transition recited in the claims. Even if the broad disclosure
of Snow may encompass compositions that undergo a gel transition as recited in the
claims, such a generic disclosure is not sufficient for Snow to anticipate claim 10.
Cf. Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1367, 71
USPQ2d 1081, 1091 (Fed. Cir. 2004) (“A prior art reference that discloses a genus still
does not inherently disclose all species within that broad category.”). Thus, the
examiner has not provided a reasonable basis to conclude that a composition
undergoing the claimed gel transition is necessarily present in the teachings of Snow.
The examiner has not set forth a reasonable basis to conclude that Snow
inherently discloses a composition that “undergoes a gel transition inside a target breast
milk duct within about 30 minutes of delivery of the composition to the target duct.”
Thus, we agree with Appellants that the examiner has not set forth a prima facie case
that Snow anticipates claim 10. We therefore reverse the rejection of claims 10-13,
17-19, 21, and 22 under 35 U.S.C. § 102(e) over Snow.
Other Issues
For the reasons discussed above, we conclude that Krezanoski would not have
suggested the claimed composition to those of skill in the art. On return of this case,
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