In re Tuominen , 671 F.2d 1359 ( 1982 )

BALDWIN, Judge.

This is an appeal from a decision by the United States Patent and Trademark Office Board of Appeals (board), sustaining the examiner’s rejection under 35 U.S.C. § 102 of claims 1 and 2. We affirm.

The Invention

Appealed claim 1 is directed to a “sunscreen composition containing as an active ingredient tocopherol acetylsalicylate” (TA), while appealed claim 2 recites a-TA as the active ingredient. Tuominen discloses a single example of the claimed sunscreen composition, a 10% oleyl alcohol solution of a-TA (1%) in a mineral oil carrier.

■Prior Art

The board affirmed the examiner’s rejection of the appealed claims as being fully met by each of three references. The first is an abstract of a 1971 Japanese patent disclosing a procedure for synthesizing TA, which is described as an analgesic agent “which did not harm the stomach.”¹ The second reference cited by the examiner is an abstract of a 1975 Japanese journal article that discusses the hydrolysis and lymphatic absorption of twelve “tocopheryl esters,” including “a-tocopheryl acid succinate.”²

The third reference, a French patent (Bohuon), was submitted to the PTO by Tuominen after the first office action.³ Bohuon teaches a synthesis for a-TA and, in addition, discloses that a “therapeutic composition” including TA and a “physiologically acceptable excipient” is useful in the prevention and treatment of “vascular thromboses.”

The Proceedings Below

In sustaining the examiner’s rejection, the board relied on In re Pearson, 494 F.2d 1399, 181 USPQ 641 (CCPA 1974), for the proposition that patentability of a known composition cannot be predicated solely on a claim preamble setting forth a use for the composition that is not suggested by the prior art. Thus, the board stated that: The composition is the same no matter what its intended use is and, consequently, the appealed claims are not seen to distinguish over the art which also discloses a composition of the recited active ingredient. We will not construe the instant claims to be limited to compositions also containing other ingredients usually utilized in sunscreening compositions merely by the fact that the introductory clause of the claims recite a different contemplated utility for the claimed composition not taught by the art. Rather, as done by the Examiner, we interpret the claims to be drawn to a composition of the active ingredients, per se, and, as such, under the rationale of Pearson, they fail to distinguish over the references.

OPINION

Contrary to the board’s findings, Tuominen contends that the recitation of “sunscreen composition” in the preamble of each of the appealed claims limits those claims to a combination of TA and additional ingredients typically found in sunscreen compositions, rather than to TA per se. According to Tuominen, none of the cited references anticipates the claimed composition, since none discloses the active ingredient in a mixture to be applied topically.

Giving the appealed claims the broadest reasonable interpretation consistent with the specification, see, e.g., In re Okuzawa, 537 F.2d 545, 548, 190 USPQ 464, 466 (CCPA 1976), we agree with Tuominen to the extent that the claimed composition is a mixture of TA and one or more other compounds, rather than TA alone. Thus interpreted, however, Tuominen’s claims read upon a mixture of TA and, among others, a physiologically acceptable carrier suitable for topical use. Therefore, they are anticipated by Bohuon’s disclosure of a composition including TA in association with a physiologically acceptable excipient. See In re Schaumann, 572 F.2d 312, 316 & n.10, 197 USPQ 5, 8 & n.10 (CCPA 1978); In re Petering, 49 CCPA 993, 1000, 301 F.2d 676, 681, 133 USPQ 275, 280 (1962).

Consequently, even if “sunscreen composition” is read as Tuominen urges, the claimed composition is not limited to exclude a composition within the teachings of Bohuon. The only distinction to which Tuominen can aver is a difference in use, which cannot render the claimed composition novel. See In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974); In re Zierden, 56 CCPA 1223, 1226-27, 411 F.2d 1325, 1328-29, 162 USPQ 102, 104-05 (1969).

Therefore, the decision of the board is affirmed.

AFFIRMED.

1 . Nakamura, et al., CHEM.ABST. 76, 34105x (1972).

2 . Nakamura, et al., CHEM.ABST. 84, 25708j (1976).

3 . C. Bohuon, French patent No. 2,314,722, published January 14, 1977, for “Method for Preparing Acetyl Salicylate from Tocal and the Like.”