Appeal No. 2006-3313
Application No. 10/423,920
Anticipation
Claims 1-141 and 24-25 stand rejected under 35 U.S.C. § 102(b) over Chien.
The standard under § 102 is one of strict identity. Under 35 U.S.C. § 102, every
limitation of a claim must identically appear in a single prior art reference for it to
anticipate the claim. Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030,
1032 (Fed. Cir. 1997). Every element of the claimed invention must be literally present,
arranged as in the claim. Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236,
9 USPQ2d 1913, 1920 (Fed. Cir. 1989).
According to the examiner (Answer, page 4) Chien, “teaches [a] mucosal
adhesive drug delivery device . . . comprising Carbopol [tm] or polycarbophil as the
mucoadhesive polymer, in [a] dosage formulation that releases the drugs (e.g.
benzocaine, a cationic treating agent) in controlled fashion.”
We find the examiner has provided sufficient evidence to support a prima facie
case of anticipation. Chien specifically discloses polycarbophil as a mucoadhesive
polymer and benzocaine, a cationic treating agent, as an incorporated treating agent.
Furthermore, the specification of the present application, page 12, defines a “gel” as,
“gel-like semi-solid materials, typically having a high degree of elasticity, such as gels,
jellies, pastes, creams, ointments, or similar materials.” The mucoadhesive polymers
1 Claim 16 was not included in this rejection but is of similar scope to claim 3, as
benzocaine is a cationic treating agent. Since the application is returned to the
examiner for further review and application of additional prior art, we leave it to the
examiner to enter a rejection of claim 16. Claim 18 should have been included in the
rejection as well. See other issues below.
3
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