Tuesday, November 26, 2013

CAFC analyzes claim limitation "essentially free of"; Board confuses milligrams and micrograms!

Within In re Eaton

In the present case, the Board’s affirmance—and the examiner’s rejections—turn on the meaning of the claim limitation “essentially free of antioxidants.” The parties dispute the construction of this phrase. However, both parties acknowledge that the specification defines “essen- tially free of antioxidants” functionally to mean that the claimed composition “should not contain an amount of antioxidants which would tend to damage and inactivate some of the vitamin B12 and/or folic acid of the vitamin supplement.” J.A. 286; Appellant’s Br. at 5; Appellee’s Br. at 14. The specification goes on to state that “lower amounts of antioxidants” may be present if they do not render the claimed composition “ineffective or [] reduce[] effectiveness.” J.A. 286. The parties’ disagreement stems from the fact that the specification does not, however, quantify what is a “lower amount[]” or what “amount of antioxidants [] would tend to damage or inactivate” the vitamin B12 or folic acid, but instead relies on functionali- ty.
Referring to the specification, the Board correctly determined that “essentially free” of antioxidants means a composition that “should not contain an amount of antiox- idants which would tend to damage and inactivate some of the vitamin B12 and/or folic acid of the vitamin supple- ment.” J.A. 3 (emphasis added).

As to factual errors in the Board's decision:

The Board’s decision is particularly problematic given a clear factual error appearing in both the examiner’s and the Board’s analysis of Jungkeit. Specifically, Jungkeit discloses 200 milligrams of vitamin C—not 200 mi- crograms, as stated by the examiner. J.A. 305. The Of- fice’s analyses repeatedly relied on the understanding that “Jungkeit’s composition contain[ed] 200 μg of vitamin C.” J.A. 4, 65 (emphasis added). In truth, Jungkeit discloses 1000 times that much vitamin C—200 mg. J.A. 305. This error is not harmless. Indeed, Jungkeit teaches the use of vitamin C in a significantly greater quantity than any of the other nine components in Jungkeit’s claimed composition. J.A. 304–05.

For example, the examiner’s rejection stated:
“It is not clear from [the definition in the specifi- cation] what amount [of antioxidant] would ‘dam- age or inactivate’ some of the vitamin B12 and/or folic acid. However, it is clear from Jungkeit that the amount of vitamin C present in the composi- tion (200μg) does not damage and inactivate the vitamin B12 and/or folic acid.”
J.A. 65 (emphasis added). The Board adopted the exam- iner’s explanation. J.A. 4. This error further undermines the Board’s conclusion that the prior art discloses compo- sitions that are “essentially free” of antioxidants.


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