Appeal No. 2001-1177 Page 8
Application No. 08/781,868
treat patients who have been subjected to exfoliation, chemosurgery, or laser
therapy. Thus, Hersh does not disclose all of the limitations of the method
claims.
With regard to the composition claims, Appellant “fully concurs that the
compositions are similar,” but argues that “the end uses of these compositions
are not similar.” Appeal Brief, page 6. Appellant argues that “[t]he preamble[s] of
the composition claims differ dramatically as the reference is directed to
protecting the skin from the ill effects of x-ray radiation while the present claims
are directed to enhancing repair from free radical damage to the skin as a result
of treatment of the skin with exfoliants, chemosurgery or laser therapy.” Id.,
pages 6-7.
This argument is not persuasive. It is true, of course, that the preamble of
the present claims differs from the preamble of the patent’s claims. However, as
discussed above, the preamble of the composition claims does not limit the
claimed composition because it merely recited a purpose or intended use of the
composition; it does not add any limitations to those in the body of the claims.
Therefore, the preamble does not change the scope of the claims.
For the reasons discussed above, the rejection under 35 U.S.C. § 102(e)
is affirmed with respect to claims 35-44 and reversed with respect to claims
45-54.
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