Appeal No. 2006-0108
Application No. 09/980,620
The "discovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art," In re Boesch, 617 F.2d 272, 276, 205
USPQ 215, 219 (CCPA 1980). Kakuda establishes that the amount of theanine in a
composition is a result effective variable to those of ordinary skill in the art. For
example, Kakuda discloses that the theanine content in the caffeine stimulation inhibitor
is preferably 10 to no more than 500 time the amount of caffeine ingested, and thus the
amount of theanine may be varied and is a result effect variable tied to countering the
effects of caffeine. Kakuda, column 4, line 31, also describes a test substance, E,
containing 50 mg/kg of theanine and no other substance, thus the test substance E
composition is 100% theanine. Kakuda alone would appear to disclose a composition
comprising 100% theanine, and claim 10 is anticipated by Kakuda. Anticipation being
the epitome of obviousness, we affirm the rejection of claims 10 under 35 U.S.C. § 103
as being obvious over Kakuda in view of Ekanayake. See In re Fracalossi, 681 F.2d
792, 794, 215 USPQ 569, 571 (CCPA 1982).
With respect to claim 12, the examiner relies on Ekanayake for the disclosure of
a tea extract comprising theanine which may also comprise an alkali or alkaline earth
metal salt of citric acid. Column 5, lines 40-45. Answer, page 6.
Appellant argues that Kakuda [ ] fails to disclose a mineral and Ekanayake [ ]
fails to disclose sleep promotion. Brief, page 21. Appellants attempt to attack each of
the references individually to rebut the non-obviousness rejection. "Non-obviousness
cannot be established by attacking references individually where the rejection is based
upon the teachings of a combination of references." In re Merck & Co., Inc., 800 F.2d
6
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