Appeal 2007-0861
Application 09/381,484
administer to preterm infants an infant formula containing at least 10 mg/100
kcal of DHA and 30 mg/100 kcal of DHA. The method defined by instant
claim 1 is therefore unpatentable under 35 U.S.C. § 103.
Appellants argue that “the combination of Kyle, Crozier and
Schweikhardt does not teach or suggest a method of enhancing the weight
gain of preterm infants by administering to the infant a weight gain
enhancing amount of DHA and ARA” (Br. 8). In response to the
Examiner’s argument that enhanced weight gain is simply another advantage
of an otherwise obvious process (Answer 6), Appellants argue that the
inherency cases cited by the Examiner apply only to products, not processes
(Br. 17-18) and that, in any case, “an inherency argument should not be
maintained in connection with an obviousness rejection” (id. at 18).
We do not find any of these arguments persuasive. First, we agree
with the Examiner that the “weight gain enhancing” recitations in claim 1
should be given no patentable weight. The preamble of claim 1 recites a
“method for enhancing the weight gain of preterm infants.” A preamble can
sometimes constitute a claim limitation. See, e.g., Pitney Bowes Inc. v.
Hewlett Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). For example,
the preamble of a claim to a therapeutic method can limit the patients on
whom the method is to be practiced. In this case, the preamble states that
the method is for “preterm infants” and provides antecedent basis for the
“said infants” recited in the body of the claim. Therefore, the preamble
effectively requires that the claimed method be performed on preterm
infants.
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