Appeal No. 2006-0108
Application No. 09/980,620
further limit claims if it merely states a purpose or intended use of subject matter. See
Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481(CCPA 1951).
In the present case, we do not find that the claim preamble, "sleep promoting"
offers a distinct definition of any of the claimed invention's limitations, but rather merely
states, for example, the purpose or intended use of the theanine composition. Thus,
with respect to the composition claims, we do not find that the claim preamble "sleep
promoting," further limits the claims. In view of this claim interpretation, appellants claim
1 claims a composition comprising theanine. Kakuda describes a composition
comprising theanine (abstract). We affirm the examiner's rejection as Kakuda
anticipates claim 1. Claims 2 and 3 fall with claim 1.
Claim 4, a method claim, stands on a different footing than the composition
claims. Claim 4 describes a method wherein the theanine is administered to an
individual having sleep disorders. The examiner has not indicated, and we do not find,
where Kakuda describes administration of theanine to an individual having a sleep
disorder.
We acknowledge the examiner's indication (Answer, page 7) that Kakuda
describes that the disclosed theanine containing composition "does not impair sleep,"
but we fail to see how such a statement provides for the administration of theanine to an
individual having a sleep disorder. Thus, we agree with appellants, that with respect to
method claim 4, the examiner has not provided evidence to support a prima facie case
of anticipation. The rejection of claim 4 for anticipation over Kakuda is reversed.
4
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