Appeal No. 2006-2587 Page 4
Application No. 09/879,710
nor-epinephrine production selected from tyrosine, and phenylalanine to their
claimed composition “would ‘materially affect the basic and novel
characteristic(s)[ ] of the claimed invention.’” Brief, page 6.
For his part, the examiner asserts that appellants’ argument is “without
merit” because, as we understand the argument, S-methylcysteine may also be a
vasoconstricting agent. Answer, page 7. The examiner, however, fails to favor
this record with any evidence to support this assertion. Accordingly, we do not
find this argument persuasive.
The examiner also asserts, (id.), “the claims never require the patient to
suffer from anything, thus the argument that the invention is aimed at avoiding
the side effects of vasoconstrictors is without merits since anyone according to
the claims can be administered this composition claimed no matter what their
need is.” We note, however, that the claim is not drawn to any method, but
instead is drawn to “[a] method of counter acting the overproduction of nitric
oxide . . . .” See claim 10. Therefore, the examiner’s assertion notwithstanding,
appellants’ claimed method requires that the overproduction of nitric oxide be
counteracted.
Further, we find the examiner’s comments regarding the side effects of
vasoconstrictors to be off base. The question is whether the basic and novel
characteristics of appellants’ claimed composition will be changed by adding to
this composition a compound that is a known vasoconstrictor? To address this
question, it is necessary and proper to determine whether appellants’
specification reasonably supports a construction that would exclude additives
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007