Appeal No. 2004-0450 Page 7
Application No. 09/785,936
commercially available phytase enzyme preparations include acid
phosphatases, it has not been previously recognized that acid
phosphatases are useful for degrading ribonucleic acids, and that the
concentration of ribonucleic acids in vegetable protein materials can be
reduced by treatment with an acid phosphatase. [Specification, page 4,
first full paragraph]
and
Applicants agree with the Examiner’s statement that the reference
clearly teaches use of an enzyme preparation that contains an acid
phosphatase, and that such an enzyme preparation is utilized in an
aqueous suspension of a soy protein material. Applicants would also
agree that RNA would be degraded by use of an enzyme preparation
containing an acid phosphatase enzyme in the method of the ‘343 patent.
[Appeal Brief, page 8, second full paragraph, emphasis added].
We emphasize here that Finase, an enzyme preparation containing acid phosphatase,
is particularly preferred for the purposes of carrying out the invention disclosed in the
‘343 patent. See the ‘343 patent, page 6, lines 26 and 27; and see comparative
examples 2 through 5, pages 7 through 10. The cited prior art reference puts a person
having ordinary skill in possession of the disclosed embodiment using Finase
enzymes.3
Applicants argue that “for a claim element to be anticipated inherently by a
reference the element must be a necessary consequence of what was deliberately
intended as disclosed in the prior art reference” (Appeal Brief, bottom of page 6, citing
3 Exhibit C attached to the Reply Brief is the Taylor declaration, filed under the provisions of 37
CFR § 1.132, executed June 17, 2003. In paragraph 5, declarant refers to the following statement in the
Appeal Brief, page 8, second full paragraph: “Applicants would also agree that RNA would be degraded by
use of an enzyme preparation containing an acid phosphatase enzyme in the method of the ‘343 patent.”
According to declarant, that statement “was made in light of knowledge provided by the invention;” it “was
not directed to explain the knowledge of those skilled in the art at or before the invention of the present
patent application.” It can be seen that paragraph 5 of the Taylor declaration is consistent with our
determination that appellants have discovered and are claiming a new benefit of the method disclosed in
the ‘343 patent where Finase is employed as the enzyme preparation.
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