Appeal No. 2006-1057
Application No. 10/005,994
lathering surfactant. We interpret the preamble claim language, "skin protective
composition for topical use that can prevent contact and passage to the skin of toxic
chemicals and irritants found in the cosmetic industry," as a recitation of intended use
which is given no patentable weight. Pitney Bowes Inc. v. Hewlett Packard Co., 182
F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). ["If … the body of the
claim fully and intrinsically sets forth the complete invention, including all of its
limitations, and the preamble offers no distinct definition of any of the claimed
invention's limitations, but rather merely states, for example, the purpose or intended
use of the invention, then the preamble is of no significance to claim construction
because it cannot be said to constitute or explain a claim limitation."]
The use of the transitional phrase "comprising" in the composition claim before
us indicates that the elements or steps following the transition may be supplemented by
additional elements or steps and still fall within the scope of the claim. See, e.g.,
Scanner Technologies Corp. v. ICOS Vision Systems Corp., 365 F.3d 1299, 1303, 70
USPQ2d 1900, 1904 (Fed. Cir. 2004).
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art. In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993). An obviousness analysis requires
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