Appeal No. 2006-3224 Page 5 Application No. 10/063,656 Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345, 65 USPQ2d 1961, 1964-65 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997). However, a preamble limits the claimed invention if it recites essential structure or steps. Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808, 62 USPQ2d 1781, 1784 (Fed. Cir. 2002). In this case, we do not find that the recitation that the method is “for biomedical applications” provides any essential structure or steps that are needed to give meaning to the claim. Accordingly, we treat the claim preamble as an “intended use” of the claimed method. Obviousness Claims 1, 3-7, 9-14, 21-24, and 26-30 stand rejected under 35 U.S.C. � 103(a) as obvious over Rembaum1 in view of Callegaro,2 and further in view of Grinstaff.3 Claims 1, 8, 10, and 14-20 stand rejected under 35 U.S.C. � 103(a) as obvious over Rembaum in view of Callegaro, and further in view of Leavitt. Claims 1 and 25 stand rejected under 35 U.S.C. � 103(a) as obvious over Rembaum in view of Callegaro, and further in view of Nair. Claims 1, 3-7, 9-14, 21-24, and 26-30 The Examiner relies on Rembaum for disclosing a “process of preparing microspheres according to the claimed invention.” Answer, page 4. Although the Examiner concedes that Rembaum’s microspheres are “characterized by [a] particle size of below 0.35 micron[s],” which is less than the claimed particle size of “from about 1 Rembaum et al. (Rembaum), U.S. Patent 4,138,383, issued Feb. 6, 1979 2 Callegaro et al. (Callegaro), U.S. Patent 6,039,970, issued Mar. 21, 2000 3 Grinstaff et al. (Grinstaff), U.S. Patent 5,665,382, issued Sep. 9, 1997Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007