Appeal 2007-0861
Application 09/381,484
However, the recitation of a “method for enhancing the weight gain”
in claim 1’s preamble does not further limit the claim and therefore does not
constitute a claim limitation. Cf. Bristol-Myers Squibb Co. v. Ben Venue
Labs., 246 F.3d 1368, 1371 (Fed. Cir. 2001): Preamble language stating that
a claimed method was “for reducing hematologic toxicity” was held not to
further limit the claim. “The steps of the . . . method are performed in the
same way regardless whether or not the patient experiences a reduction in
hematologic toxicity, and the language of the claim itself strongly suggests
the independence of the preamble from the body of the claim.”
Similarly here, whether ARA and DHA are added to preterm infant
formula in the recited amounts for the purpose of enhancing weight gain or
for some other purpose changes nothing about how the steps recited in claim
1 are performed. Thus, the “enhancing weight gain” recitation in the
preamble is not a claim limitation. Likewise, the recitation of “a weight gain
enhancing amount of DHA and ARA” in the body of claim 1 adds nothing to
the specific amounts of DHA and ARA that are also recited in the claim.
Appellants’ argument that inherency does not apply to process claims
is contrary to case law. See In re Woodruff, 919 F. 2d 1575, 1578 (Fed. Cir.
1990) (“It is a general rule that merely discovering and claiming a new
benefit of an old process cannot render the process again patentable.”);
Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1378 (Fed. Cir. 2005)
(“[W]hen considering a prior art method, the anticipation doctrine examines
the natural and inherent results in that method without regard to the full
recognition of those benefits or characteristics within the art field at the time
of the prior art disclosure.”).
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013