Appeal No. 2005-0317 Page 3
Application No. 09/962,352
The examiner rejected the claims as obvious in view of the Premarin® entry in the
Physician’s Desk Reference (PDR). See the Examiner’s Answer, pages 3-4:
The PDR discloses that Premarin[®] . . . contains a mixture of conjugated
estrogens, including the recited 17α-dihydroequilin and its sulfate ester. It
further discloses . . . that it can be used for palliation to treat prostate
cancer and breast cancer.
Instant independent claim 13 differs over the PDR in reciting only
17α-dihydroequilin or a sulfate or glucuronide conjugate in substantially
purified form. However, the instant phrase “substantially purified” and
“comprising“ language would allow for the presence of other estrogens.
Appellants argue that the examiner has misinterpreted the claim language. See
the Reply Brief, page 2: “‘[S]ubstantially purified form’ as applied to the
17α-dihydroequilin or a sulfate or glucuronide conjugate thereof means substantially
free of other estrogens.” “[W]hile the PDR teaches the administration of Premarin®,
which contains 17 α-dihydroequilin and 17α-dihydroequilin sulfate salts, the PDR does
not teach that 17α-dihydroequilin or its salts are in substantially purified form, i.e.,
substantially free of other estrogenic components.” Appeal Brief, page 10. “Thus, while
the claim is open to additional steps, the step recited in the claim requires administering
17α-dihydroequilin or a sulfate or glucuronide conjugate thereof in substantially purified
form, not as the PDR teaches, the administration of a mixture of conjugated estrogens.”
Reply Brief, pages 3-4.
We agree with Appellants’ interpretation of the claim language. “It 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). However, claims must not be
read so broadly as to vitiate an express limitation. See In re Wilder, 429 F.2d 447, 450,
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