Appeal No. 2001-2538 Page 8
Application No. 08/894,193
disclosed by Hirohata “generally contain no amino components that accelerate
discoloration.” Page 5. The examiner has pointed to no evidence to the
contrary, nor provided any evidence or scientific reasoning to show that such
compositions would have been suggested by Hirohata’s disclosure.
Claims 21-37 also require that the claimed foodstuff compositions
comprise “an amino component.” The examiner argues that this claim limitation
reads on the allantoin present in all of Hirohata’s disclosed oral hygiene
compositions, as well as the EDTA present in the exemplary mouthwash
composition shown in Table 1.1 We disagree with the examiner’s claim
construction. Although claims are given their broadest reasonable interpretation
during examination, a construction that vitiates an express limitation is
unreasonably broad. See Texas Instruments, Inc. v. International Trade Comm.,
988 F.2d 1165, 1171, 26 USPQ2d 1018, 1023 (Fed. Cir. 1993) (“[T]o construe
the claims in the manner suggested by TI would read an express limitation out of
the claims. This we will not do.”).
Here, the claims define a method that comprises adding allantoin to a
“foodstuff composition containing an amino component.” It is true that allantoin
contains three secondary amino groups and one primary amino group.
Specification, page 8. However, if “an amino component” were construed to
include the allantoin added to the claimed composition, the limitation requiring
1 The examiner also argues that “amino acids are present in a wide variety of foodstuffs so that
the leftovers and contaminants from eating, as shown on p. 4 of Hirohata, would reasonably be
expected [to] remain in the oral cavity when sorbate and allantoin are administered.” Examiner’s
Answer, page 8. We need not dwell on this line of argument; Appellant’s Reply Brief (pages 5-7)
ably points out the deficiencies in the examiner’s reasoning.
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