Appeal No. 2006-3224 Page 5
Application No. 10/063,656
Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345, 65 USPQ2d 1961,
1964-65 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553
(Fed. Cir. 1997). However, a preamble limits the claimed invention if it recites essential
structure or steps. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
808, 62 USPQ2d 1781, 1784 (Fed. Cir. 2002). In this case, we do not find that the
recitation that the method is “for biomedical applications” provides any essential
structure or steps that are needed to give meaning to the claim. Accordingly, we treat
the claim preamble as an “intended use” of the claimed method.
Obviousness
Claims 1, 3-7, 9-14, 21-24, and 26-30 stand rejected under 35 U.S.C. § 103(a) as
obvious over Rembaum1 in view of Callegaro,2 and further in view of Grinstaff.3
Claims 1, 8, 10, and 14-20 stand rejected under 35 U.S.C. § 103(a) as obvious
over Rembaum in view of Callegaro, and further in view of Leavitt.
Claims 1 and 25 stand rejected under 35 U.S.C. § 103(a) as obvious over
Rembaum in view of Callegaro, and further in view of Nair.
Claims 1, 3-7, 9-14, 21-24, and 26-30
The Examiner relies on Rembaum for disclosing a “process of preparing
microspheres according to the claimed invention.” Answer, page 4. Although the
Examiner concedes that Rembaum’s microspheres are “characterized by [a] particle
size of below 0.35 micron[s],” which is less than the claimed particle size of “from about
1 Rembaum et al. (Rembaum), U.S. Patent 4,138,383, issued Feb. 6, 1979
2 Callegaro et al. (Callegaro), U.S. Patent 6,039,970, issued Mar. 21, 2000
3 Grinstaff et al. (Grinstaff), U.S. Patent 5,665,382, issued Sep. 9, 1997
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