Appeal No. 2006-3313
Application No. 10/423,920
claim limitation.” Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305, 51
USPQ2d 1161, 1165-66 (Fed. Cir. 1999).
b. Anticipation
Claim 16 was not included in the anticipation rejection over Chien 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 over Chien. Similarly, the
examiner should consider whether claim 18 should be rejected in view of Chien, as
diclofenac is a well known anionic drug and is described at column 6, line 22 of Chien.
b) Obviousness
With regard to claim 17, we direct the examiner’s attention to U.S. Patent No.
6,126,959, describing that terbutaline may be administered via a bioadhesive. Column
2, line 45, column 4, line 49-59, and column 7, lines 13-18.
Regarding claim 19, see naproxen disclosed at column 6, line 2 of Moro, U.S.
Patent No. 6,585,997.
We recommend that the examiner consider making a rejection of claims 17 and
19 for obviousness over Chien in view of the respective relevant patents discussed
herein. The additional references describe well known active agents known to be
useful for local delivery via a bioadhesive.
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