Appeal No. 2006-1245 Page 5
Application No. 10/294,106
should be read in light of the specification as it would be interpreted by one of ordinary
skill in the art.” In re Sneed, 710 F.2d 1544,1548, 218 USPQ 385, 388 (Fed. Cir. 1983)
(citation omitted).
The specification states that “[i]n pharmaceutical compositions, the withanolide is
inhibitory at a dosage of 1 to 1,000 micrograms per milliliter or gram.” Specification,
page 26, lines 5-7. Therefore, we construe the “effective amount” recited in the claims
to encompass a composition containing as little as one microgram per gram of any one
of the withanolides recited in the claims. That is, any composition having as little as one
microgram of the claimed withanolides, per gram of total composition weight, would
appear to meet the limitation requiring “an effective amount” of the claimed withanolides
“so as to produce the COX[-]2 inhibition.”
2. Definiteness
The examiner rejected claims 1, 3, 5, 15 and 16, under 35 U.S.C. § 112, second
paragraph, on the basis that the claims were indefinite because they failed to
particularly point out and distinctly claim the subject matter regarded by Appellants as
being the invention. The examiner’s rationale for the rejection appears in its entirety as
follows:
It is not clear if the plant extract is being administered to the patient
or subject. Appellant[s] need[ ] to explicitly state that the plant extract is
administered to the patient or subject in need thereof.
Further, the statement “in a system containing the enzymes[,]” is
confusing. It would be clearer if [A]ppellant[s] stated that the system is a
subject such as a mammal thus it would be clearer if [A]ppellant[s]
amended the claims to read that the withanolide is administered to a
patient in need thereof.
Answer, page 4.
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