Ex Parte Ames et al - Page 4

                Appeal No. 2007-1138                                                                         
                Application No. 10/304,918                                                                   

                (Fed. Cir. [1984]), cert. denied, 469 U.S. 857 (1984)).  Although no ‘litmus                 
                test’ exists as to what effect should be accorded to words contained in a                    
                preamble, review of a patent in its entirety should be made to determine                     
                whether the inventors intended such language to represent an additional                      
                structural limitation or mere introductory language.”  In re Paulsen, 30 F.3d                
                1475, 1479, 31 USPQ2d 1671, 1673-74 (Fed. Cir. 1994).                                        
                      In this case, our review of the specification indicates that the phrase                
                “orally administrable” is one that “breathes life and meaning into the claims                
                and, hence, is a necessary limitation to them.”  Loctite Corp. v. Ultraseal                  
                Ltd., 781 F.2d 861, 866, 228 USPQ 90, 92 (Fed. Cir. 1984).  According to                     
                the specification, the claimed medicament can be administered by any                         
                effective route (Specification 6: 17-25).  Oral administration is identified as              
                one such route (at 5: 12 to 6: 2).  24 specific oral formulations are listed in              
                the specification (6: 29 to 9: 24).  These oral formulations are used to                     
                determine the efficacy of the medicament in reducing triglycerides and                       
                weight gain (11: 25 to 13: 27).  Claims are interpreted in view of the                       
                specification as they would be understood by one of skill in the art.  In view               
                of the specification, we interpret the phrase “orally administrable” to mean                 
                that the medicament is in a physical form which could be administered by                     
                mouth.                                                                                       
                                                PRIOR ART                                                    
                      Perricone teaches tocotrienol or tocotrienol-enriched vitamin E in “a                  
                dermatologically acceptable carrier or vehicle” for topical application to the               
                skin to treat radiation skin burn (Col. 3, ll. 15-51).  For example:                         



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