Appeal No. 94-3206
Application 07/823,827
any animal. Rather, the composition is administered to an animal in need of
improvement in digestibility of carbohydrates. Thus, according to claim 1 on appeal,
the claimed method requires determining the need for improvement in digestibility of
carbohydrates in an animal by monitoring the carbohydrate digestion coefficient of the
animal.
Appellant relies upon this aspect of the claims on appeal in arguing for the
patentability of the claims. See, e.g., the paragraph bridging pages 13-14 of the
Appeal Brief (“The claimed invention calls for a determination of the need for improved
carbohydrate digestibility by monitoring of the digestion coefficient and then formulating
a composition . . . as determined by the need to improve carbohydrate digest.”).
Appellant specifically argues at page 14 of the Appeal Brief that “[t]he prior art is silent
as to the need to monitor the digestion coefficient.”
The examiner characterizes the claimed method at page 3 of the Examiner’s
Answer as “a method of increasing disaccharidase activity in warm-blooded animals by
administering a composition containing iron in the form of an amino acid chelate.”
Nowhere in the Examiner’s Answer does the examiner recognize that the claimed
invention also requires a specific “determining” step. By its terms, 35 U.S.C. § 103
requires that obviousness be determined on the basis of the claimed “subject matter as
a whole.” Where as here, the examiner’s obvious determination has been premised
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