Appeal No. 2003-1783
Application No. 09/560,472
limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and
vitality’ to the claim, then the claim preamble should be construed as if in the balance of
the claim. . . . If, however, the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the preamble offers no distinct
definition of any of the claimed invention’s limitations, but rather merely states, for
example, the purpose or intended use of the invention, then the preamble is of no
significance to claim construction because it cannot be said to constitute or explain a
claim limitation.” Pitney Bowes Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305, 51
USPQ2d 1161, 1165-66 (Fed. Cir. 1999).
We agree with the examiner that, in the present case, the preamble language
does not give life, meaning, and vitality to the claim and that the body of the claim fully
and intrinsically sets forth the complete invention. We do not give patentable weight to
the preamble language inorganic ions, peptides, proteins, and saccharides.
Moreover, appellants’ specification, page 14, line 12, indicates that a suitable
polyanionic block includes poly(meth)acrylic acid. Appellants’ specification, page 11,
lines 18-30, states that non-interactive polymers include polyethylene glycol. Similarly,
Humphries, page 300, Table 1, compound 11 describes the same polymethacrylic acid
polyanion with polyethylene glycol side chains. Assuming, arguendo, that patentable
weight is given to the preamble claim language, we find no distinction between the
claimed subject matter and that of Humphries. As stated in In re Papesch, 315 F.2d
381, 391, 137 USPQ 43, 51 (CCPA 1963), “From the standpoint of patent law, a
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