Appeal No. 2005-0126
Application No. 09/967,791
We disagree. When the claims are viewed in accordance with the specification
and the prosecution history they encompass absorption through the oral mucosa and
specifically exclude enteral and intravascular administrations. We agree with appellant
that Naito does not describe administration of the sugar composition by a method other
than enteral or intravascular. In our view, Naito’s oral administration by ingestion
reasonably appears to be enteral administration.1 The examiner provides no evidence
that administration by ingestion as described by Naito would not have been considered
enteral administration by one of ordinary skill in the art. Moreover, we do not find that
Keep overcomes the deficiencies of Naito, as Keep only describes intravascular
administration of the sugar composition.
To establish prima facie obviousness of a claimed invention, all the claim
limitations must be taught or suggested by the prior art. In re Royka, 490 F.2d 981, 180
USPQ 580 (CCPA 1974). "All words in a claim must be considered in judging the
patentability of that claim against the prior art." In re Wilson, 424 F.2d 1382, 1385, 165
USPQ 494, 496 (CCPA 1970). See also, MPEP § 2143.03. We do not find the
examiner has presented evidence of knowledge in the art of administration of the
1 The Merck Manual of Diagnosis and Therapy, Section 22, Chapter 298 (2004),
states that “For oral administration, the most common route, absorption refers to the
transport of drugs across membranes of the epithelial cells in the GI tract. .... The oral
mucosa has a thin epithelium and a rich vascularity that favors absorption, but contact is
usually too brief, even for drugs in solution, for appreciable absorption to occur. A drug
placed between the gums and cheek (buccal administration) or under the tongue
(sublingual administration) is retained longer so that absorption is more complete.”
(Attached)
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