Appeal 2007-2524
Application 10/194,834
story it tells. In this case, Cagle’s story is about “utilizing sustained release
compositions which allow the antibiotics contained therein to penetrate
deeply into the eye” for sterilizing the eye during intraocular surgical
procedures and to prevent post-surgical infections (Cagle, Abstract; FF 1).
The compositions are characterized in Cagle’s narrative as containing
quinolones, such as ciprofloxacin, in antimicrobial effective amounts. Cagle
states that an effective amount of ciprofloxacin is 0.35 wt. %. While the
specific examples of a composition with 0.35 wt. % ciprofloxacin also
contain the preservative BAC (FF 8, 12), we can find nothing in Cagle’s
disclosure that would have led persons of skill in the art to read Cagle’s
storyline to require the presence of BAC in its quinolone compositions. To
the contrary, the description of quinolone compositions without
preservatives – including the general disclosure, the specific examples, and
its claim 1 – provide evidence that it was not. In sum, based on Cagle’s
disclosure of a genus of ciprofloxacin compositions which lack preservative
and Cagle’s specific preference2 for a composition in which the effective
2 In In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962),
Petering’s claims were directed to specific isoalloxazine compounds. The
Karrer patent was cited for its teaching of a genus of isoalloxazine
compounds having X, Y, Z, P, R, and R’ substituents. Specific preferences
for the X, Y, Z, P, R, and R’ substituents were described by Karrer, where
X, P, and R’ were hydrogen, Y and Z could be one of two choices, and R
could be one of four choices. Petering, 301 F.2d at 681, 133 USPQ at 280.
Based on the pattern of “specific preferences” and the limited choices, the
court determined that Karrer “describes to one skilled in this art not only the
broad class but also this much more limited class within that broad class. . . .
It is our opinion that one skilled in this art would, on reading the Karrer
patent, at once envisage each member of this limited class.” Petering, at 301
F.2d at 681 133 USPQ at 280.
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