Appeal No. 2006-0735
Reexamination Control No. 90/006,036
of localizing said therapeutic agent in the same cellular compartment as the target
molecule of said therapeutic agent in a cell in vitro.
11. The therapeutic agent of any of claims 6 or 9, wherein said localization
signal comprises a protein component.
40. While claims 6 and 9 limit the therapeutic agent, which comprises the localization
signal, to a nucleic acid, claim 11 requires that the localization signal comprise a
protein component.
III. Discussion
Anticipation
A claim is anticipated only when a single prior art reference discloses each and
every limitation of the claim. Glaxo, Inc. v. Novopharm, Ltd., 52 F.3d 1043, 1047, 34
USPQ2d 1565, 1567 (Fed. Cir. 1995). "An anticipatory reference, however, need not
duplicate word for word what is in the claims. Anticipation can occur when a claimed
limitation is 'inherent' or otherwise implicit in the relevant reference." Standard Havens
Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369, 21 USPQ2d 1321, 1328 (Fed.
Cir. 1991).
In analyzing whether patentees claims are anticipated by the prior art, we give the
claims their broadest reasonable interpretation consistent with the specification as it
would be interpreted by one of ordinary skill in the art. In re Morris, 127 F.3d 1048,
1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Sneed, 710 F.2d 1544, 1548, 218
USPQ 385, 388 (Fed. Cir. 1983). Even though we may look to the specification to
understand the scope of the claims, we are mindful that limitations are not to be read into
the claims from the specification. In re Van Geuns, 988 F.2d 1181, 1186, 26 USPQ2d
1057, 1059 (Fed. Cir. 1993).
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