Appeal No. 2001-1909 Page 10
Application No. 09/016,786
The second interpretation would lead one to construe the phrase
“administered at night” to mean releasing the vitamin within the body at night and
gives the claim a scope that would cover, for example, the presence of a time-
release tablet within the body timed to release vitamin at night. Such a scope
would not limit the period of time when the vitamin is introduced to the body prior
to it being released within the body. As long as the vitamin is released within the
body at night, the vitamin could be introduced at any time of the day.
Because of the effect a proper interpretation of the phrase has on the
scope of the claims, it is important that examiner carefully analyze both possible
interpretations. We also say this because, based on our review of the
prosecution history, the former interpretation is the interpretation that examiner
and appellants seem to have agreed upon and the one on which examiner has
built the prima facie case of obviousness. The latter interpretation has not been
addressed and yet the specification would appear to support it.
As we explained in the Background section supra, original claims 50-61
were drawn to improving nerve tissue repair by administering a vitamin B
complex on a “substantially continuous 24-hour basis.” Claims 50 and 59 were
subsequently amended (paper no. 5) to change the step of administration from a
“substantially continuous 24-hour” administration to administration “at night.” In
effect, this changed the thrust of the claimed invention from one focusing on the
bioavailability of the vitamin in the body over a 24-hour period to one focusing on
taking a vitamin exclusively at night. That is the interpretation examiner has
relied upon in determining patentability.
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