Appeal No. 2006-0108
Application No. 09/980,620
sleeplessness. There is nothing in the specification or the claims that excludes
caffeine as being the cause of said sleeplessness.
With respect to the obviousness rejection of claims 8 and 9, claim 8 is
representative. Claim 8 is drawn to “[t]he method according to claim 4, wherein
said sleep disorders are those caused by changes in a body rhythm.”
Appellants assert that “the Examiner has implicitly acknowledged that
Kakuda [ ] does not disclose sleep disorders caused by changes in body rhythm
as appears in claim 8. Because this is the only additional element in claim 8 that
does not appear in claim 4, the Examiner has acknowledged that a body rhythm
disorder does not occur in Kakuda [ ].” Appeal Brief, pages 17-18.
I agree with appellants that if Kakuda teaches the treatment of a sleep
disorder such as sleeplessness, it implicitly teaches a sleep disorder caused by a
change in body rhythm. Thus, I would affirm on the basis as set forth for claim 4,
as anticipation is the epitome of obviousness. See In re Fracalossi, 681 F.2d
792, 794, 215 USPQ 569, 571 (CCPA 1982).
With respect to the obviousness rejection of claims 20 and 28, claim 20 is
representative. Claim 20 is drawn to “[t]he method of claim 5, wherein the
composition is administered at a dose of 0.2 to 200 mg/kg weight.”
Appellants argue that Kakuda in Example 1 teaches away from that
limitation. See Appeal Brief, pages 22-23. According to appellants, mice were
given theanine in amounts of 174 mg/kg or 1740 mg/kg. See id. at 22. The mice
given 174 mg/kg of theanine “appeared to demonstrate the exact same effects as
the mice that were given no theanine but given caffeine,” whereas the mice given
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