Appeal No. 2003-1019 Page 4
Application No. 09/524,132
or ketone group in position 17 of the D ring” (id., page 4).
Based on these criteria and an extensive chromatographic analysis, appellants
found “the essential estrogenic compounds present in naturally derived equine
conjugated estrogens . . . [to] consist of the following 10 compounds, the salts of their
conjugates, or mixtures thereof: estrone; equilin; )8,9-dehydroestrone; 17"-estradiol;
17"-dihydroequilin; 17$-dihydroequilin; 17$-estradiol; equilenin; 17"-dihydroequilenin;
and 17$-dihydroequilenin” (specification, pages 4-5), which may “be present as
conjugated estrogens . . . including, but not limited to, glucuronide and sulfate . . . [and]
may also be present as salts of conjugated estrogens” (id., page 5). Moreover,
appellants detected and identified a number of non-estrogenic impurities in Premarin®
from the source material (mares’ urine), namely indican, sulfated benzyl alcohol,
hippuric acid, benzoic acid, and creatinine (see, e.g., the results of the analyses of
peaks 1, 4, 6, 7, and 8 isolated from Premarin®, specification pages 32, 34, 36, 37 and
40).
DISCUSSION
“The name of the game is the claim,” In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). As always, “[a]nalysis begins with a key legal
question -- what is the invention claimed?” since “[c]laim interpretation . . . will normally
control the remainder of the decisional process,” Panduit Corp. v. Dennison Mfg. Co.,
810 F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987). In determining “the
invention claimed,” we begin with the proposition that “the language employed [in a
claim] must be analyzed - - not in a vacuum, but always in light of the of the teachings of
the prior art and of the particular application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232,
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