Appeal 2007-2524
Application 10/194,834
amount of ciprofloxacin is 0.35 wt. %, it is our opinion that a composition
comprising 0.35 wt % ciprofloxacin and which is free of preservative is
sufficiently described by Cagle to constitute anticipation under 35 U.S.C. §
102(b) just as if it were explicitly written down in a single example.
Appellants contend that Cagle does not anticipate the claimed
invention because Examples 1 and 3, which contain 0.35% ciprofloxacin,
contains the preservative benzalkonium chloride (BAC) and thus are not
“free of any other component effective as a preservative” (Br. 11).
Appellants argue that the Examiner’s assertion that Cagle’s claim 1
describes a composition which is free of BAC is erroneous since “the
disclosure of Cagle et al. does not contain any reference to compositions
comprising a quinoxaline and an ophthalmically acceptable carrier which
lack a secondary preservative, the claims of Cagle cannot be interpreted to
encompass this negative limitation” (Reply Br. 5).
Appellants’ argument appears to be that the skilled worker would not
have read the ciprofloxacin composition of claim 1 to be free of preservative
since all Cagle’s examples of a useful therapeutic ciprofloxacin composition
include the preservative BAC. We do not find this argument persuasive.
Appellants have introduced no evidence that a skilled worker, reading
claim 1 of Cagle, would have understood it to require the presence of a
preservative. Arguments of counsel cannot take the place of evidence
lacking in the record. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595,
44 USPQ2d 1610, 1615 (Fed. Cir. 1997). To the contrary, we find sufficient
evidence of record to support the Examiner’s finding that Cagle describes a
composition that anticipates the claimed invention.
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