Appeal No. 95-0523
Application No. 07/885,490
Vaeck has not been undertaken. On page 6, lines 2-13, of the
Examiner's Answer the examiner's reasoning is stated thus:
The examiner agrees with appellant that the
prior art teaches inactivating the enzyme
after it is used to hydrolyse the protein
of interest. The prior art and the claimed
invention differs in the approach taken; but,
the end result is the same. The claimed
invention keeps the enzyme active so that
it can be used to hydrolyze the protein in
the formula after ingestion while the prior
art teaches the protein is hydrolyze[sic]
before ingestion. Both of these methods
produce a baby formula that is more tolerable
for babies with digestive problem[sic]. Thus,
it would have been obvious for one skilled
in the art to choose one method or the other
with the same expectation of success. The
way to keep the enzyme active would have been
within the skill of one in the art.
The examiner's reliance on a proposition that "the way to
keep the enzyme active would have been within the skill of one
in the art" is misplaced. As explained by the Federal Circuit
in
In re Vaeck, supra, the obviousness of a claimed composition
must be based on the teachings of the applied prior art and
not on whether an artisan of ordinary skill could produce the
claimed compositions from materials known in the prior art.
In this case the prior art contains no suggestion that one
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