Appeal No. 2001-1044 Page 16
Application No. 08/881,216
administration to the lung. See Optical Disc Corp. v. Del Mar Avionics, 208 F.3d
1324, 1334, 54 USPQ2d 1289, 1295 (Fed. Cir. 2000) (“Without evidence in the
patent specification of an express intent to impart a novel meaning to a claim
term, the term takes on its ordinary meaning.”). Thus, we agree with the
examiner that topical administration does not include administration to the lung.
With respect to claim 26, Appellants have admitted that the “xylit” and
“sorbit” recited in the claims are not monosaccharides, as required by the claim’s
Markush language. Although Appellants proposed amending the claim to recite
“xylitol” and “sorbitol,” that amendment was proposed after the final rejection and
was refused entry by the examiner. See Paper No. 10, filed Oct. 14, 1998
(proposing to amend claim 26) and Paper No. 11, mailed Nov. 2, 1998 (refusing
entry of Paper No. 10).
With respect to the rejection of claim 25, Appellants argue that “[t]here is
nothing inconsistent with a topical composition/method and a pulmonary
infection. Page 34, lines 4-7 [of the specification] recites local (i.e., topical)
administration to the lungs (i.e., the site of a pulmonary infection).” Appeal Brief,
page 7.
This argument is not persuasive. The portion of the specification that
Appellants rely on (page 34, first full paragraph) is quoted above. For the
reasons discussed above, we do not agree with Appellants’ position that the
specification uses the phrases “topical administration” and “local administration”
as synonyms. Rather, the specification makes clear that “topical” administration
is one form of “local” administration, while administration to the lungs is another,
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