Appeal 2007-1154
Application 09/367,950
(a) a first active ingredient which is formoterol, a pharmaceutically
acceptable salt or solvate thereof or a solvate of such a salt; and
(b) a second active ingredient which is budesonide.
Written descriptive support:
As an initial matter, we note that Appellant’s Specification discloses
the step of administering an effective amount of the composition set forth in
claim 13 to a patient in need thereof (see, e.g., Specification 3: 21-27), but
the Specification, including the originally filed claims, does not appear to
contain a literal disclosure of a method wherein a patient is instructed to
inhale an effective amount of a composition on demand. “Although the
exact terms need not be used in haec verba, . . . the [S]pecification must
contain an equivalent description of the claimed subject matter” (Lockwood
v. American Airlines Inc., 107 F.3d 1565, 1571-1572, 41 USPQ2d 1961,
1966 (Fed. Cir. 1997)).
The phrases “instructing a patient to inhale” and “instructing a patient
to inhale the composition on demand” were added to the claim in
Appellant’s April 20, 2001 Response to the Examiner’s December 18, 2000
Non-final Action (Response 1-3). Accordingly, we remand the application
to the Examiner to clarify where written descriptive support for the
foregoing phrases is found in Appellant’s Specification. In this regard, we
encourage Appellant to be an active participant in this determination and
clearly explain where written descriptive support for this added language is
found in their Specification.
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