Appeal 2007-4217
Application 10/345,394
Example 1 does not require a flow modifier or milling step and yet the gel
product is characterized as an amorphous gel. (See, e.g., Specification 6, 10,
11.) Moreover, we note that the claim does not require any degree of
“flowability.” Thus, finding no other difference between the product of
Example 1 of the Specification and the product of Yamanaka, we conclude
that the dressing of Yanamaka would meet the “flowability” requirement of
claim 1.1
Appellants argue further that “the doctrine of inherency is not
appropriate here because the method of making the ‘gel films’ of . . .
Yamanaka . . . is not the same as making the flowable gels of the present
invention.” (Reply Br. 4-5.)
However, the Examiner notes that Yanamaka teaches that the
composition may be used after the gel is disintegrated with a rotary
disintegrator, thus it would appear that “a 95% water-containing, gelatin-like
1 We note that Appellants do not define “amorphous” or “flowable” in the
Specification. “Amorphous” may be defined as “with no shape,
unorganized; having no determinate form,” with an example of use being :
“The amorphous gel seeped through the cracks.” http://www.english-
test.net/gmat/vocabulary/words/093/gmat-definitions.php#amorphous,
(accessed October 9, 2007). See also amorphous. Dictionary.com. The
American HeritageŽ Dictionary of the English Language, Fourth Edition.
Houghton Mifflin Company, 2004.
http://dictionary.reference.com/browse/amorphous (accessed: October 09,
2007). Thus, as would be understood by the ordinary artisan, an amorphous
gel would have some degree of flowability. Note that our mandate is to give
claims their broadest reasonable construction. In re American Academy of
Science Tech Center, 367 F.3d 1359, 1364, 70 U.S.P.Q.2d 1827, 1830 (Fed.
Cir. 2004). “An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
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