Appeal No. 95-2244
Application 08/036,648
We find that the examiner's position is founded on an
unreasonable interpretation of the claims before us. The
actual claim language recites that appellants claim "[a]
dosage form" which "comprises" components "(a)" and "(b)".
Under fundamental rules of claim interpretation, the term
"comprises" does not exclude any other features, either
disclosed features or features not disclosed or even
contemplated. Accordingly, we interpret the claims on appeal
to embrace the internal structure of appellants' "dosage form"
and, implicitly embrace, the other unrecited features which
are necessary to constitute appellants' "dosage form". We
remind the examiner that it is the function of the
specification, not that of the claims, to set forth the
practical limits of operation of an invention. In re Johnson,
558 F.2d 1008, 1017, 194 USPQ 187, 195 (CCPA 1977).
It is also incumbent upon the examiner in making a
rejection under the first paragraph of 35 U.S.C. § 112, to
make out a prima facie case of lack of enablement. In re
Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA
1982); In re Armbruster, 512 F.2d 676, 677, 678, 185 USPQ 152,
153 (CCPA 1975); In re Marzocchi, 439 F.2d 220, 224, 169 USPQ
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