Appeal No. 1998-1245
Application No. 08/111,831
Other Issues
Upon return of this application to the examining group we would urge the examiner
to reconsider the patentability of claims 8 and 9 in light of the following remarks. We note
that the examiner has apparently interpreted claims 8 and 9 as being directed to
compositions which contain the specified metabolites of DHA. (Answer, page 3 and
Supp.. Answer, page 3). While it is reasonable to interpret claims 8 and 9 as
encompassing compositions, we would urge the examiner to consider whether the claims
additionally encompass the individual compounds which are defined in the Markush group
of each of these claims. We would read the phrase "An antipsychotic" as a statement of
intended use or a characteristic of the substance being claimed. The term "comprising" is
read as opening the claim to other possible unnamed ingredients, for example
pharmaceutical carriers, but does not necessarily require that other ingredients be present.
We find no limitation in either claim 8 or 9 which requires the presence of an additional
ingredient. Thus, the claim would reasonably appear to read on the individual substances
of the Markush groups of each claim. Should the examiner interpret the claim as reading
on the individual compounds, the examiner should reevaluate the prior art, particularly the
references to VanRollins to determine whether those compounds were known or obvious
at the time of the invention by applicants. In so doing, we would urge the examiner to rely
on the full text article rather than merely a limited abstract in the effort of considering the
patentability of these claims. Should the examiner determine that there is reasonable
basis for questioning the patentability of these claims, under either 35 U.S.C. § § 102 or
10
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