Appeal No. 2002-0523
Application No. 09/117,918
In turn, the examiner relies on Menz for the disclosure that it is desirable to have
a mixture of triglycerides and diglycerides for use in foodstuffs, cosmetics and
pharmaceuticals that contain substantially no monoglycerides. Answer, page 4.
According to the examiner, “[i]t is within the skill of the art to select optimal
parameters, such as amounts of ingredients, in a composition in order to achieve a
beneficial effect.” Id. “Therefore, the amounts of components in the product and molar
ratio of reactants are not considered critical to the invention absent evidence of
unexpected results.” Id. The examiner also argues that “setting forth an intended use
for, or an inherent property in, an otherwise old composition do not differentiate the
claimed composition from those of the prior art.” Id.
The examiner concludes (Answer, page 4):
[i]t would have been obvious to one of ordinary skill in the art at the time of
the invention to prepare a glyceride mixture using the esterification
process taught by Barsky comprising a mixture of diglycerides and
triglycerides with substantially no monoglycerides as taught by Menz with
a reasonable expectation of obtaining a modified glyceride oil with a wide
range of fusibility that is not brittle.
Appellants respond, arguing that “neither reference teaches nor suggests
the combination of a vegetable oil with any of the three claimed transesterifying
components, including the triglyceride itself, in the claimed molar ratio, which is clearly
a claim limitation of the present invention, a combination of these references fails to
render the claimed invention prima facie obvious. “ Brief, page 3. The appellants also
argue the examiner has failed to present basis in fact/or technical reasoning to support
a theory of inherency. Brief, page 4.
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