Appeal No. 2007-1138
Application No. 10/304,918
1. An orally administrable medicament comprising
predetermined amounts of a phytyl substituted chromanol and
an obesity-promoting drug, wherein:
said medicament is in unit dosage form suitable for
pharmaceutical administration;
said phytyl substituted chromanol is selected from the
group consisting gamma-tocopherol, delta-tocopherol, alpha-
tocotrienol, gamma-tocotrienol and delta-tocotrienol; and
said obesity-promoting drug is selected from the group
consisting of a corticosteroid and an anti-diabetes drug selected
from the group consisting of hypoglycemic drugs, starch
blockers, glucose production blockers, and insulin sensitizers.
ISSUE ON APPEAL
The Examiner contends that the phrase “orally administrable” is not a
patentable limitation of claim 1 because it “fails to impart any physical
limitation” to the claimed medicament (Answer 4). Appellants contend that
“orally administrable” is a “functional limitation” which “precludes the
claims from reading on topical formulations.” (Reply Br. 1).
The issue in this appeal is whether the limitation in claim 1 that
requires the medicament to be “orally administrable” distinguishes it from a
composition for topical application to the skin.
CLAIM INTERPRETATION
The terms appearing in a preamble may be deemed limitations of a
claim when they ‘‘give meaning to the claim and properly define the
invention.’’ Gerber Garment Technology, Inc. v. Lectra Sys., Inc., 916 F.2d
683, 688, 16 USPQ2d 1436, 1441 (Fed. Cir. 1990) (quoting Perkin-Elmer
Corp. v. Computervision Corp., 732 F.2d 888, 896, 221 USPQ 669, 675
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013