Appeal No. 2006-0108
Application No. 09/980,620
1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986). The test of obviousness is "whether
the teachings of the prior art, taken as a whole, would have made obvious the claimed
invention." In re Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
Ekanayake provides motivation for adding various sugars, minerals, acids and
flavorings to tea extracts comprising theanine (col. 10, Example II) to counter the harsh
bitter taste such tea extracts (col. 1 lines 18-67, Answer, page 6). For the reasons
discussed in detail above, we conclude that the combined teachings of the cited
references would have rendered obvious the composition of claim 12. Claims 13-14
and 19 fall with claim 12.
We reverse the obviousness rejection of method claims 5-9, 11 and 16-18 and
20-28 for reasons similar to the reversal of the anticipation rejection of method claim 4.
We do not find the examiner has provided evidence in the prior art of record of the
administration of theanine to an individual having a sleep disorder. The dissent
concludes that Kakuda teaches that by taking theanine in conjunction with caffeine, one
"can fall asleep faster" than if one consumed caffeine alone (i.e., consume caffeine
without impairing sleep). However, such a conclusion that "one can fall asleep faster"
is not a conclusion that can be drawn on the record before us. There is no
development by the examiner of any idea that a person who is hypersensitive to
caffeine is a person having a sleep disorder. Nor is there any support for the
conclusion that "not impairing sleep" is the equivalent of "falling asleep faster". For
example, if the theanine as described in the reference counters the effects of caffeine, it
would return an individual to a normal (non-caffeine sensitive) state. It is unclear how
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