Appeal No. 2007-4245
Application 09/489,310
The Appellant amended claim 23 accordingly. Amendment filed
April 8, 2005 at 2. In that same amendment, the Appellant argued (Id. at 4):
As stated throughout the present specification, drinking low pH
beverages contributes to dental erosion. Thus, anyone drinking
a low pH beverage composition is in need of the compositions
of the present invention.
In response, the Examiner stated (Office Action dated June 6, 2005 at
2):
Although Applicant has adopted the “in need thereof”
language suggested by the examiner, the comments made in the
response make clear that the examiner’s reasoning has not been
accepted . . . .
Whether true or not, [the Applicant’s] statements nullify
the use of “in need thereof” as distinguishing language since, as
set forth at the passage bridging pp. 1333 and 1334 of the
Jansen decision, the term “in need thereof” must be considered
in light of the prosecution history. By making the above
statement, Applicant casts doubt – on the record – on the
adequacy of “in need thereof” as distinguishing language.
Accordingly, the examiner now suggests amending claim
23 as follows:
A method of treating dental erosion comprising orally
administering to a mammal who has been directed to ingest, for
the purpose of treating said dental erosion, a beverage
composition having a pH of less than about 5… [underlining in
original.]
On appeal, the Appellant argues (Appeal Brief at 43):
The additional amendments proposed by the Examiner are not
supported by any proper interpretation of the Jansen case. The
case does not require that additional language [be added] to the
claims, beyond that which has been added to the present claim,
namely “in need thereof”.
3 “Appellant’s Supplemental Appeal Brief” filed August 31, 2006.
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