Appeal No. 2007-0307
Application No. 09733,640
Appellants contend that Lundgren teaches away from injectable
compositions (Brief, page 7) and that there is no description that the compositions
of Lundgren can be injected (Brief, page 8).
The examiner, however, contends that the term "injectable" in the preamble
of the claim is a recitation of intended use of the composition. Answer, page 12.
“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.” Pitney Bowes Inc. v. Hewlett Packard Co.,
182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). A claim
preamble that is more than a mere statement of purpose and essential to
particularly point out invention defined by claims is considered as part of claimed
invention. In re Bulloch, 604 F.2d 1362, 1366, 203 USPQ 171, 174 (CCPA 1979).
In the present case, the term "injectable composition" in the preamble of the claim
defines characteristics or properties of the composition. Thus, in our view, the
term "injectable" in the claim is a feature of the claimed composition.
The examiner argues that appellants have not presented argument that the
compositions are different. Answer, page 12. The examiner further argues that
both the composition of Lundgren and the claimed composition exist in polymer
solution before solidifying into a three-dimensional depot. The examiner
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