Ex Parte PARADISSIS et al - Page 9


                 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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