Appeal No. 2006-3290 Page 3
Application No. 10/072,823
While the preamble of claim 1 contains language regarding the intended
use of the composition “for treating or preventing prostate cancer or breast
cancer,” we do not find this language to be a limitation on the claim. Rowe v.
Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) (“Where . . . a
patentee defines a structurally complete invention in the claim body and uses the
preamble only to state a purpose or intended use for the invention, the preamble
is not a claim limitation.”).
In addition, claim 1 requires that “the composition is suitable for the
treatment or prevention of prostate cancer or breast cancer.” In our opinion, this
clause is a statement of the intended use of the composition and only requires
that the composition may be used for the treatment or prevention of prostate
cancer or breast cancer. The composition itself may be “suitable” for a variety of
uses.
Obviousness:
Examiner finds that Son, ‘434 or ‘016 teach compositions comprising
oridonin. Answer, page 4. Examiner finds that Son, ‘434 and ‘016 teach that
oridonin is useful to treat cancer.2 Id. In addition to the treatment of cancer, Son
and ‘016 also teach the use of oridonin for the treatment of, inter alia, oral
diseases and sore throat (Son, bridging sentence, pages 4-5), stomachache
2 Appellant concedes that ‘016 and ‘434 teach “pharmaceutical compositions comprising oridonin
. . . as antitumor agents”; and Son teaches “that oridonin is known to exhibit carcinostatic activity.”
Brief, page 5. Appellant states that “[c]arcinostatic activity refers to the ability of oridonin to stop
the growth of cancer.” Brief, bridging sentence, pages 5-6.
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