Appeal No. 2001-2661 Page 5
Application No. 09/164,350
We have carefully reviewed the Examiner's Answer in its entirety, but find no
plausible argument or evidence which would compensate for the deficiencies of
Popescu, page 15, Example 2. Again, the operative cooling step in that example is
different and non-obvious from the incubating step in claim 1, performed "at a
temperature above the temperature of the pretransition of the lipid component."
For the reasons succinctly stated in applicants' Appeal Brief and Reply Brief,
amplified above, we reverse the rejections of claims 1 and 4 through 22 under 35
U.S.C. § 102(a) and 35 U.S.C. § 103(a). In so doing, we note that both applicants and
the examiner have treated all of the claims as standing or falling together for the
purposes of this appeal. The examiner does not bifurcate process and product-by-
process claims and treat them separately. The examiner does not separately argue
before us, that the products covered in applicants' product-by-process claims
reasonably appear to be the same, or substantially the same, as the products prepared
by Popescu, Example 2, even if Popescu's incubation temperature is different from
applicants' temperature. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985)(If the product in a product-by-process claim is the same as or obvious
from a product of the prior art, the claim is unpatentable even though the prior product
was made by a different process.) Nor does the examiner controvert statements in
applicants' specification that MLCVs prepared according to the present invention are
characterized by several features that distinguish them from MLCVs made by prior art
processes. One particularly salient feature is the highly uniform distribution of
biologically active compound among the MLCVs (instant specification, page 9, last
paragraph).
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