Appeal No. 1996-2910
Application 07/825,488
On return of this application, we recommend that the examiner reevaluate the
patentability of claim 25 under 35 U.S.C. § 102 in light of the Van Lommen reference,
the decisions in Schaumann and May, and the foregoing remarks.
(2) In making a patentability determination, “[a]nalysis begins with a key legal
question -- what is the invention claimed?” since “[c]laim interpretation . . . will normally
control the remainder of the decisional process,” Panduit Corp. v. Dennison Mfg. Co.,
810 F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987), cert. denied, 481 U.S.
1052 (1987).
Claim 26 is directed to a pharmaceutical composition “consisting essentially of” a
pharmaceutically acceptable carrier, and as active ingredients, (a) the blood pressure
reducing SRRR stereoisomer of ","’-[iminobismethylene]bis[6-fluoro-3,4-dihydro-2H-1-
benzopyran-2-methanol] or a pharmaceutically acceptable acid addition salt thereof and
(b) its enantiomer, RSSS, or a pharmaceutically acceptable acid addition salt thereof;
the RSSS stereoisomer being present in an amount capable of potentiating the blood
pressure lowering effect of the SRRR stereoisomer. It is well settled that “the phrase
‘consisting essentially of’ limits the scope of a claim to the specified ingredients and
those that do not materially affect the basic and novel characteristic(s) of a
composition.” In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976).
Here, a basic and novel characteristic of the pharmaceutical composition of claim 26 is
its blood pressure reducing or antihypertensive effect. Thus, claim 26 is open to
ingredients that do not materially affect its antihypertensive activity.
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