Appeal No. 2003-1561 Page 8
Application No. 09/632,840
determination that each of Abdel-Malik, Shaw, Cherukuri or Cook
describe chewing gums that include ingredients corresponding to
the gum ingredients specified for representative claim 20,
including at least one elastomer that the claimed animal
digestible elastomer ingredient reads on. Rather, appellants
argue that the recited intended use of the claimed gum for an
animal2 and the recited functional property concerning
appellants’ gum having the attribute of “sticking and conforming
to an animal’s teeth” differentiate the claimed gum from the
applied prior art.
The first issue raised by appellants’ argument is whether
the term “for an animal” in representative claim 20 limits the
scope of the claim such that the claimed gum does not read on the
gums of Abdel-Malik, Shaw, Cherukuri or Cook. Whether a
statement in a claim of purpose or intended use constitutes a
limitation for purposes of patentability must be determined by
the facts of each case in view of the claimed invention as a
whole. See In re Stencel, 828 F.2d 751, 754, 4 USPQ2d 1071, 1073
(Fed. Cir. 1987). When the aforementioned phrase is removed from
2 As evident by a full reading of appellants’ disclosure,
appellants employ the term “animal” in their specification and
claims as meaning animals other than humans. See, e.g., page 1,
lines 15-20 of appellants’ specification.
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