Appeal No. 2002-1251 Page 9
Application No. 08/459,340
accurate. First, most of Branch is directed antisense therapy, not ribozymes. In
addition, although the examiner focuses on problems relating to delivery of
ribozymes in vivo, Branch’s focus is on the difficulty involved in choosing an
appropriate target site in a substrate RNA. To the extent that ribozyme target
selection is relevant to the instant claims, it would seem to relate more to the
scope of claims such as claim 74, which recites no structural limitations on the
design of the recited nucleozyme, rather than, as the examiner would have it, to
delivery of ribozymes in vivo. Branch does not state that delivery of ribozymes in
vivo is problematic and therefore does not provide evidence to support the
examiner’s position.
Finally, “[i]t is axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable interpretation consistent
with the specification.” In re Sneed, 710 F.2d 1544,1548, 218 USPQ 385, 388
(Fed. Cir. 1983). Terms appearing in the preamble of a claim do not necessarily
limit the scope of the claim. See IMS Technology, Inc. v. Haas Automation, Inc.,
206 F.3d 1422, 1434, 54 USPQ2d 1129, 1137 (Fed. Cir. 2000) (“If the preamble
adds no limitations to those in the body of the claim, the preamble is not itself a
claim limitation and is irrelevant to proper construction of the claim.”).
Here, the claims are directed to a “pharmaceutical composition”
comprising a nucleozyme and a pharmaceutically acceptable carrier. See, e.g.,
claim 74. The preamble does not add any limitations to those appearing in the
body of the claim and therefore does not further limit the claim. According to the
broadest reasonable interpretation, therefore, the claims read on any
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007