Appeal No. 2007-1138
Application No. 10/304,918
“Suitable carriers include water, alcohols, oils and the like.” (Col. 5,
ll. 28-32.)
“[T]he carrier . . . can consist of a relatively simple solvent or
dispersant such as water or oils.” (Col. 5, ll. 47-48.)
Drug Facts teaches topical corticosteroids as anti-inflammatory agents
(Drug Facts at p. 2950). Topical corticosteroids are used to treat several
different conditions, including sunburns (id. at 2951).
DISCUSSION
We find that the Examiner erroneously concluded (Answer 5) that
“orally administrable” does not limit the scope of claim 1. Under its proper
interpretation, this phrase requires the medicament of claim 1 to be in a
physical form which can be ingested by mouth. Having adopted this
interpretation, the question in this appeal is whether the cited combination of
topical tocotrienol and topical corticosteroid as suggested by Perricone in
view of Drug Facts would be in a physical form that is acceptable for oral
administration. We conclude that it is.
Perricone teaches water at the top of its list of suitable carriers (Col. 5,
ll. 28-32 and 47-48). Water is clearly compatible with oral administration.
Among other carriers described in Perricone (col. 5, l. 28 to col. 6, l. 37),
several are listed which appear suitable for oral use, e.g., “vegetable, animal
or marine fats or oils” at col. 5, ll. 60-61. When the Patent Office has reason
to believe that a functional limitation asserted to be critical for establishing
patentability based on inherency under 35 U.S.C. § 102 or on prima facie
obviousness under 35 U.S.C. § 103, “it possesses the authority to require the
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