Appeal No. 1997-2639
Application No. 08/237,129
sequence of $-taipoxin (Lind, Fig. 1, page 72). See, In re Samour, 571 F.2d 559, 562,
197 USPQ 1, 4 (CCPA 1978) [holding that in making a rejection under 35 U.S.C. 102(b)
on a single prior art reference that discloses every material element of the claimed subject
matter the Patent Office can properly rely on additional references to show what was
known by or would have been obvious to one of ordinary skill in the art.]
In addition, appellant’s counsel has stipulated that the $-taipoxin of Lind, which has
been obtained from snake venom, and that used in the claimed composition are the same.
In view of the above, we find Fohlman’s administration of $-taipoxin in a physiological
saline to be administration of the claimed peptide in a desalted carrier fluid.
Nor do we find the language in claim 21 further defining the exact same taipoxin
composition as a growth factor, to distinguish the claimed composition from that of Lind.
The language in the preamble in a claim, acts as a claim limitation only when such
language serves to “give meaning to a claim and properly define the invention,” not when
the preamble merely states a purpose or intended use of the invention. In re Paulsen, 30
F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994) (quoting DeGeorge v. Bernier,
768 F.2d 1318, 1322 n.3, 226 USPQ 758, 766 n.3 (Fed. Cir. 1985)).
Thus, claims 21 and 22 stand rejected under 35 U.S.C. § 102/103 over Fohlman in
view of Lind.
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