Appeal No. 2006-2575
Application No. 10/025,567
colony-forming immunogens in the rumen and intestinal tracts,” and that the
generic term “host” is present in the Specification. (Br. 18.)
The Examiner does not explain, and we do not see, how the term
“living being,” as used in claim 5, departs from the originally filed claims
and Specification. As discussed supra, we do not interpret claim 5’s
preamble recitation, “for administration to a living being to inhibit the
adherence of a colony-forming immunogen in the digestive tract of the
living being,” as placing any limitation on claim 5, because the body of the
claim recites a structurally complete composition. Rowe v. Dror, 112 F.3d
at 478, 42 USPQ2d at 1553.
As also discussed supra, we interpret the intended result recitation in
the body of claim 5, regarding the composition’s effect “when administered
to the living being,” as not placing a positive limitation on the claim. Thus,
because it does not affect any portion of the claim having patentable weight,
the amendment of claim 5 to recite “living being” does not change the scope
of the claim. Because the amendment does not change the scope of the
claim, the amendment cannot add new matter to the claim. This analysis
applies equally to claim 12.
We therefore reverse the new matter rejection of claims 5 and 12.
5. OBVIOUSNESS OF CLAIMS 1, 3, 5, 13, 16, and 19
Claims 1, 3, 5, 13, 16, and 19 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Tokoro, Kaspers,7 Pimentel,8 and Krause. (Answer 9.)
7 Kaspers et al. “Transfer of IgA from Albumen into the Yolk sac during
Embryonic Development in the Chicken,” J. Vet. Med. A, Vol. 43, pp. 225-
231 (1996).
17
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