Appeal No. 2006-3372
Application No. 10/454,521
DISCUSSION
Rejection of Claims 1-8, 11, and 12 under 35 U.S.C. § 102(a) over McAtee
As Appellant does not argue the claims separately, we will treat them
as standing and falling together, and we thus focus our analysis on
independent claim 1. See, e.g., In re Dance, 160 F.3d 1339, 1340 n.2,
48 USPQ2d 1635, 1636 n.2 (Fed. Cir. 1998) (noting that dependent claims
not argued separately on the merits rise or fall with the independent claim to
which they relate).
McAtee is cited for teaching the use of lipoic acid, lactic acid, glycolic
acid and ascorbic acid for use in treating acne (Answer 3). The examiner
also cites claim 1 of the McAtee patent for teaching that the active
ingredients are useful at levels ranging from 0.001% to 20%. Id. Finally,
the examiner cites In re Dillon, [919 F.2d 688, 692] 16 USPQ2d 1897, 1900
(Fed. Cir. 1990) (in banc), for the proposition “that the recitation of a new
utility for an old and well known composition does not render that
composition new.” Id. at 5.
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1432 (Fed. Cir. 1997). We find that McAtee discloses the composition of
claim 1, and the rejection is affirmed.
McAtee teaches a composition for delivering active ingredients to the
surface of the skin, such as ingredients that are active against acne. Id. at
col. 4, lines 10-14. McAtee teaches that lipoic acid is an anti-acne active
(col. 4, line 50), as well as an anti-wrinkle and anti-skin atrophy active
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013