Appeal No. 2006-0108
Application No. 09/980,620
GREEN, Administrative Patent Judge, concurring-in-part; dissenting-in-part.
I agree with the majority that the examiner has made out a prima facie
case of unpatentability as to claims 1-3, 10, 12-14 and 19. I would go farther,
however, and also affirm the rejection under 35 U.S.C. § 102(b) as to claim 4,
and the obviousness rejection as to claims 5-9, 11, 20, 21 and 25-28.
Claim 4 stands rejected under 35 U.S.C. § 102(b) as being anticipated by
Kakuda.
Claim 4 is drawn to “[a] method for promoting sleep in an individual having
sleep disorders, comprising administering an effective sleep promoting amount of
theanine to the individual having sleeping disorders.”
As I see it, the issue of whether Kakuda anticipates the method of claim 4
rests on the interpretation of “sleep disorders.” “[C]laims ‘must be read in view of
the specification, of which they are a part,’” as “the specification ‘is always highly
relevant to the claim construction analysis. Usually, it is dispositive; it is the
single best guide to the meaning of a . . . term.’” Phillips v. ATWH Corp., 415
F.3d 1301, 1315, 75 USPQ2d 1321, 1327 (Fed. Cir. 2005) (en banc) (citations
omitted). Moreover, during ex parte prosecution, claims are to be given their
broadest reasonable interpretation consistent with the description of the invention
in the specification. See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989).
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