Appeal No. 2006-0760
Application No. 10/312,417
However, topical administration is specifically disclosed by Levin for
tetracycline components, proteases, steroids, and topical antibiotics, but not
for Cox-2 inhibitors (Levin at 10, ll. 28-30; 20 (cl. 33); 21 (cl. 43); 23 (cl.
55)). In anticipation cases based on the disclosure of a genus, a “pattern of
preferences” had been found that narrowed the generic formula to limited
class of compounds which included anticipatory species. See In re Petering,
301 F.2d 676, 681, 133 USPQ 275, 279 (CCPA 1962); In re Schaumann,
572 F.2d 312, 315, 197 USPQ 5, 8 (CCPA 1978); Sanofi-Synthelabo v.
Apotex Inc., 470 F.3d 1368, 1377, 81 USPQ2d 1097, 1102-03 (Fed. Cir.
2006). In this case, there is no clear “pattern of preferences” that would
serve to narrow Levin’s generic disclosure to the specific embodiment in
which a Cox-2 inhibitor is administered by topical administration.2 The
Examiner has not provided sufficient evidence to establish that the skilled
worker would have recognized in Levin a “dermal therapeutic system” for
delivery of a Cox-2 inhibitor. Because the Examiner’s burden to establish a
case of prima facie anticipation has not been met, we reverse the rejection of
claims 13-19.
2 The Examiner presumed that Levin’s “topical” administration is a
disclosure of a dermal therapeutic system as required by claim 13.
Appellant do not challenge this presumption, and we adopt it here for the
purpose of this discussion.
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