Appeal No. 2004-0974 Page 6
Application No. 10/117,169
patentee defines a structurally complete invention in the claim body and uses the
preamble only to state a purpose or intended use for the invention, the preamble
is not a claim limitation.”).
2. Obviousness
The examiner rejected claims 5-9, among others, as obvious in view of
either of two combinations of nine references. Claim 5 is the broadest of these
claims. As previously noted, claim 5 is directed to an orally ingestible
composition “having fertility promoting activity in males,” comprising “effective
amounts” of vitamins C and E, selenium, ferulic acid, zinc, and at least two B
vitamins.
At the outset, we can set aside the following references that were cited by
the examiner: Newmark, Togasaki, and Costa. These references relate to
ingredients that are not required by claim 5 (green tea, green tea, and L-carnitine,
respectively). Also, Liu was cited merely for its teaching that dong quai is a
source of ferulic acid; since claim 5 is open to ferulic acid from any source, we
need not further consider Liu.
We also will not consider the disclosure of Weil, because neither Appellant
nor we have been provided a translation of the German-language reference. In
both the first and final Office actions, the examiner relied on an English-language
abstract of the reference, but in the Examiner’s Answer, she cited to the full-text,
German-language reference instead. The examiner noted that “a translation has
been obtained and is included in the file,” Examiner’s Answer, page 16, but
Appellant asserts that she has not been provided a copy of the translation. Reply
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