Appeal No. 2006-0108
Application No. 09/980,620
According to the examiner (Answer, page 4) Kakuda
disclose a caffeine stimulation inhibitor and a method for inhibiting caffeine
stimulation comprising theanine extracted from tea leaves and/or a
substance having theanine as its main active ingredient … The
composition is taught to be particularly useful for people who are
hypersensitive to caffeine and/or desire to suppress the action of caffeine
(including those who desire to drink tea and coffee without impairing
sleep) to allow them to consume caffeine-containing beverages or foods
without worry over its effects (col. 2, lines 1-62). Kakuda [ ] disclose that
the theanine may be crude or refined theanine and the theanine content in
the caffeine stimulation inhibitor is preferably 10 to no more than 500
times the amount of caffeine ingested (col. 2, lines 47-51). The caffeine
stimulation inhibitor is preferably used as an additive of beverages and
foods and may also be absorbed in the form of tablets, capsules, granules
or syrup (col. 2, lines 63-67). Kakuda discloses a method for inhibiting
caffeine stimulation wherein the caffeine stimulation inhibitor is also in
powder and liquid form (claims 2 and 4).
We agree that the examiner has provided evidence to support a prima facie case
of anticipation of claims 1-3. We begin, as did the examiner (Answer, page 7), with
claim interpretation. "If the claim preamble, when read in the context of the entire claim,
recites limitations of the claim, or, if the claim preamble is 'necessary to give life,
meaning, and vitality' to the claim, then the claim preamble should be construed as if in
the balance of the claim. . . . If, however, the body of the claim fully and intrinsically
sets forth the complete invention, including all of its limitations, and the preamble offers
no distinct definition of any of the claimed invention's limitations, but rather merely
states, for example, the purpose or intended use of the invention, then the preamble is
of no significance to claim construction because it cannot be said to constitute or
explain a claim limitation." Pitney Bowes Inc. v. Hewlett Packard Co., 182 F.3d 1298,
1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). Thus a claim preamble does not
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007