Appeal No. 2005-1746 Page 3
Application No. 09/963,738
Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999).
“Where . . . a patentee defines a structurally complete invention in the claim body
and uses the preamble only to state a purpose or intended use for the invention,
the preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478, 42
USPQ2d 1550, 1553 (Fed. Cir. 1997).
In this case, the preamble merely states the intended use of the claimed
composition. The preamble’s statement that the composition is intended as “[a]
dry direct tableting base material” does not add any further limitations to those
recited in the body of the claim. “If the preamble adds no limitations to those in
the body of the claim, the preamble is not itself a claim limitation and is irrelevant
to proper construction of the claim.” IMS Technology, Inc. v. Haas Automation,
Inc., 206 F.3d 1422, 1434, 54 USPQ2d 1129, 1137 (Fed. Cir. 2000). Therefore,
we interpret claim 1 as encompassing compositions comprising low-substituted
hydroxypropyl cellulose impregnated with a sugar or a sugar alcohol wherein the
product resulting therefrom is dried, and wherein said low-substituted
hydroxypropyl cellulose has a hydroxypropyl content in the range from 5 to 16%
by weight.
Turning now to the rejection, Shimizu is cited for teaching a solid
preparation that “comprises a water-soluble sugar alcohol that may be selected
as sorbitol and erythritol” and “a low-substituted hydroxypropyl cellulose.”
Examiner’s Answer, page 4. Shimizu is also cited for teaching that a preferred
dosage form is a tablet, which the examiner asserts “embraces the ‘dry direct
tableting’” as required by claim 1. Id. The rejection states that “[t]he instant
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