While a highly fact specific inquiry here, the bottom line is that the specification’s definition of the claim terms is controlling and should be fully respected.
Background / Facts: The patent on appeal here from rejection at the PTO relates to treating psoriasis by administering a multiple vitamin supplement composition. The claims at issue specifically recite a vitamin supplement composition of folic acid, vitamin B12, and vitamin B6, which is also “essentially free of anti-oxidants.” While the parties dispute the construction of this phrase, they both acknowledge that the specification defines “essentially free of antioxidants” functionally to mean that the claimed composition should not contain an amount of antioxidants that would render the claimed composition “ineffective or [] reduce[] effectiveness.” In particular, the specification notes that “among the antioxidants especially to be avoided is added vitamin C.”
Issue(s): Whether the prior art’s composition including 200 mg of vitamin C would meet the applicant’s definition of “essentially free of antioxidants” based on statements that its composition was “effective” at treating psoriasis.
Holding(s): No. “In short, the fact that [the prior art’s] composition is not ‘ineffective’ does not mean that it reads on the ‘essentially free of antioxidants’ limitation.” Based on the Board’s own construction, “[t]o anticipate, it is not enough for the prior art composition to have an amount of antioxidant that merely allows the composition to be ‘effective.’ To anticipate, the prior art compositions must have an amount of antioxidant that does not result in ‘reduced effectiveness.’” The prior art’s “disclosed compositions may be effective, but still have an amount of antioxidant that ‘inactivate[s] some of the vitamin B12 and/or folic acid.’”