Appeal No. 2001-1909 Page 9
Application No. 09/016,786
Reason #5
Examiner has failed to recognize that the claims use language that is
susceptible to different interpretations
“[D]uring patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed.... 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, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
We specifically refer to the phrase “administered at night” as it is used in
claims 50 and 59. The following passage from claim 50 is illustrative:
… wherein the water-soluble B complex Vitamin is administered at night to
optimize the regeneration, maintenance or repair of nerve tissue that occurs
naturally during sleep resulting from the presence of said B complex Vitamin.
There are two ways of interpreting “administered”: 1) the vitamin is
introduced from outside the body to inside the body or (2) the vitamin is released
inside the body.
The first interpretation would lead one to construe the phrase
“administered at night” to mean introducing the vitamin to the body at night and
would give the claim a scope that would cover, for example, swallowing or
injecting the vitamin at night. Such a scope would not limit the duration of
release of the vitamin within the body after the vitamin has been introduced into
the body. As long as the introduction is at night, release of the vitamin could last
for any period of time.
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