Appeal No. 2005-0317 Page 4
Application No. 09/962,352
166 USPQ 545, 548 (CCPA 1970) (“[E]very limitation positively recited in a claim must
be given effect in order to determine what subject matter that claim defines.”); In re
Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976) (“[W]e must give effect
to all claim limitations.”).
Here, the claims are directed to a “method . . . comprising administering . . . an
effective antineoplastic amount of 17α-dihydroequilin . . . in substantially purified form.”
The examiner’s claim interpretation effectively reads out the final limitation from the
claim. That is, under the examiner’s interpretation, the claim is open to administration of
17α-dihydroequilin in combination with other estrogens. Under this interpretation, the
claim would have the same scope as one that read a “method . . . comprising
administering . . . an effective antineoplastic amount of 17α-dihydroequilin.”
As Appellants have pointed out, their interpretation of the claim language is
supported by the working examples in the specification, which involve administration of
17α-dihydroequilin without any other estrogens. It is also supported by the prosecution
history, during which Appellants have consistently interpreted the claim to require
administering 17α-dihydroequilin in “substantially purified form, i.e., substantially free of
other estrogenic components.” See, e.g., the response filed September 17, 2002, page
7. Both the specification and the prosecution history are relevant to construing claim
language. See Renishaw plc v. Marposs Societa per Azioni, 158 F.3d 1243, 1248, 48
USPQ2d 1117, 1120 (Fed. Cir. 1998) (“[A] claim must be read in view of the
specification of which it is a part.”); id. at 1249 n.3, 48 USPQ2d at 1121 n.3 (“Likewise,
any interpretation that is provided or disavowed in the prosecution history also shapes
the claim scope.”).
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