Appeal No. 2001-0983 Page 2
Application No. 08/954,946
two steps. First is construing the claim, . . . followed by, in the case of
anticipation or obviousness, a comparison of the construed claim to the prior
art.”). In some cases, of course, the scope and meaning of the claims are clear
enough that examination can proceed without expressly construing the claim
language. Such is not the case here.
It is unclear from the claim language what components, if any, other than
“phenoxyacetic acid [or a] lower alkyl ester[] thereof,” are required to be present
in the composition of claim 18. Ordinarily, a composition for pharmaceutical use
(as the composition of claim 18 appears to be) would comprise at least an active
ingredient and a pharmaceutically acceptable carrier. Here, however, it is clear
that a pharmaceutically acceptable carrier is not required in the composition of
claim 18, because that limitation is added by dependent claim 20. If claim 18
were read to require a pharmaceutically acceptable carrier, claim 20 would be
entirely superfluous. Such a claim construction is “presumptively unreasonable.”
See Beachcombers, Int’l Inc. v. Wildewood Creative Prods., Inc., 31 F.3d 1154,
1162, 31 USPQ2d 1653, 1659 (Fed. Cir. 1994) (claim construction that renders
dependent claim superfluous is “presumptively unreasonable.”).
Of course, claim 18 may be drafted so that the claimed composition need
not include any components other than “phenoxyacetic acid [or a] lower alkyl
ester[] thereof.” If this is the case, it is unclear what the claim requires by reciting
that the phenoxyacetic acid is present in “an amount . . . sufficient to prevent said
adverse reaction.” That is, if the only required ingredient in the claimed
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