Appeal No. 2004-1391 Page 8
Application No. 09/811,654
the rats treated in Zehner’s experiment were not mammals in need of promoting
cardiovascular health.
Finally, Appellant argues that the instantly claimed method differs from the
method claimed by Zehner. This argument lacks merit – the instant rejection is
based on the working example disclosed by Zehner, not on Zehner’s claims. Cf.
In re Benno, 768 F.2d 1340, 1346, 226 USPQ 683, 686 (Fed. Cir. 1985) (“The
scope of a patent’s claims determines what infringes the patent; it is no measure
of what it discloses. A patent discloses only that which it describes, whether
specifically or in general terms, so as to convey intelligence to one capable of
understanding.”).
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b), we make the following new
ground of rejection: claim 7 is rejected under 35 U.S.C. § 102(b) as anticipated by
Zehner. Claim 7 is directed to “[t]he method of claim 1 wherein the tagatose is D-
tagatose, L-tagatose, or a mixture of the two isomers.”
As discussed above, Zehner discloses a method that anticipates instant
claim 1. The tagatose administered in the disclosed method was D-tagatose. See
column 2, lines 47-50. Thus, the disclosed method also meets the limitations of
instant claim 7, and therefore anticipates.
Summary
We reverse the rejection for lack of adequate written description. We
affirm the rejection of claims 1-6 as anticipated, and we enter a new rejection of
claim 7 on the same basis.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007