Appeal No. 2006-3313
Application No. 10/423,920
a) In view of the above, claims 15-19 and 26-42 are without rejection. However,
there may be prior art more relevant to these claims than that cited by the examiner.
United States Patent No. 6,479,045 (‘045), filed December 21, 2000, discloses methods
and compositions for preventing miscarriage and premature labor which are in the form
of a gel of polycarbophil polymer, which may incorporate an additional treating agent,
and which provides for controlled drug release. See, in particular, claim 1 and col. 4,
lines 52-65. It is recommended that the examiner review the disclosure of the ‘045
patent and determine its relevance to the remaining pending claims. The examiner
should consider whether rejection of the claims for obviousness would be appropriate
based on the ‘045 patent taken in combination with Chien or other additional
appropriate prior art to reach specific compositions recited in the dependent claims.
In addition, with particular regard to claims 28-29, these claims recite a composition,
and the intended use recited in the preamble would reasonably appear not to be a claim
limitation. “If the claim preamble, when read in the context of the entire claim, recites
limitations of the claim, or, if the claim preamble is ‘necessary to give life, meaning, and
vitality’ to the claim, then the claim preamble should be construed as if in the balance of
the claim. . . . If, however, 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
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