Appeal No. 2001-1044 Page 15
Application No. 08/881,216
2. Indefiniteness
The examiner rejected claims 25 and 26 under 35 U.S.C. § 112, second
paragraph, as indefinite. The examiner reasoned that claim 25 is indefinite
because it is directed to a method comprising administering a terbinafine-
containing composition to the lungs of a subject, but depends on claim 24, which
is directed to a method of topically administering a composition to a patient. The
examiner reasoned that claim 25 is inconsistent with the claim from which it
depends, because topical administration does not include administration to the
lungs (by inhalation). The examiner also rejected claim 26 as indefinite, on the
basis that “xylit” and “sorbit” are not “monosaccharide[s]” as recited in the claim.
We affirm these rejections as well. With respect to claim 25, the
specification makes clear that “topical” administration differs from administration
to the lung. See page 2, last paragraph (distinguishing “topical” administration
from “pulmonary” or “pulmonal” administration); page 33, second full paragraph
(“Administration may be peroral, topical or parenteral. It preferably is topical or
parenteral, especially parenteral, particularly pulmonal.”); page 34, first full
paragraph (“Topical administration is effected with liposomal preparations such
as lotions, gels, creams or ointments. Local administration may also be effected
by the inhalation route, especially to the lung.”). Thus, the specification makes
clear that “local” administration includes both “topical” administration and
“pulmonal” or “pulmonary” administration, i.e., administration to the lung.
The specification does not make clear that Appellants intended the phrase
“topical administration” to include all methods of local administration, particularly
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