Appeal No. 2001-0407 Page 15
Application No. 08/460,215
that the claims of the ‘170 patent are directed to the same nucleic acid recited in
the instant claims. Thus, they argue, “[t]he latter claims are deemed enabled,
and therefore, given that it is within the skill in the art to make a nucleic acid
composition that additionally comprises a pharmaceutical carrier or diluent, these
claims are clearly enabled by the specification. The intended use . . . does not
negative the fact that how to make and use the composition is taught by the
specification.” Appeal Brief, page 6.
We agree with Appellants. “[It is a] general principle, as well-settled as
any in our patent law precedent, that a claim preamble has the import that the
claim as a whole suggests for it.” Bell Communications Research Inc. v. Vitalink
Communications Corp., 55 F.3d 615, 620, 34 USPQ2d 1816, 1820 (Fed. Cir.
1995).
If the claim preamble, when read in the context of the entire claim,
recites limitations of the claim, or, if the claim preamble is
“necessary to give life, meaning, and vitality” to the claim, then the
claim preamble should be construed as if in the balance of the
claim. . . . If, however, the body of the claim fully and intrinsically
sets forth the complete invention, including all of its limitations, and
the preamble offers no distinct definition of any of the claimed
invention’s limitations, but rather merely states, for example, the
purpose or intended use of the invention, then the preamble is of no
significance to claim construction because it cannot be said to
constitute or explain a claim limitation.
Pitney Bowes Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d
1161, 1165-66 (Fed. Cir. 1999).
Here, the claim is directed to a composition “for treating cyst formation
associated with APKD,” comprising a PKD1 gene and a pharmaceutically
acceptable carrier. The examiner has not shown that the preamble language
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