Appeal No. 2006-0251 Page 4
Application No. 10/017,697
essential, non-essential2 and optional components. According to White, the
disclosed pharmaceutical compositions comprise three essential components:
1. tri-esters, such as triethyl citrate and glyceryl triacetate (column 3,
lines 21-64);
2. polyvinylpyrrolidone (column 3, line 65 – column 5, line 20); and
3. at least one pharmaceutically acceptable active.
As optional components, Whites pharmaceutical compositions may also include
polyethylene glycol (column 6, line 41 – column 7, line 31) and/or water (column
7, lines 32-46). According to the examiner, White discloses polyethylene glycol
having molecular weight of from about 300 to about 4,600. Answer, page 3.
According to the examiner (Answer, page 4), since the transitional term
“comprising” 3 does not exclude tri-esters, White discloses a composition that
meets all the limitations of the rejected claims. A claim is anticipated if each and
every element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference. See, e.g., Structural Rubber Prods. Co.
v. Park Rubber Co., 749 F.2d 707, 715, 223 USPQ 1264, 1270 (Fed.Cir.1984);
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548, 220 USPQ 193, 198
(Fed.Cir.1983); Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ
781, 789 (Fed.Cir.1983).
2 According to White (column 6, lines 25-40), nonessential components include, inter alia,
solublizing agents, colorings surfactants, and flavorings”.
3 The transitional term “comprising” is a term of art used in claim language which means that the
named elements are essential, but other elements may be added, and still result in a composition
within the scope of the claim. Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d
1608, 1613 (Fed. Cir. 1997).
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