Appeal 2006-1306
Application 10/218,991
The Examiner’s statement that “the xylitol of Reed et al would have
inherently been melted when heated to 200°F” (Answer 5) appears to be
speculative at best. Reed does not indicate that any part of the syrup is
melted or made molten by heating to “about 200°F”. Additionally, it is
unclear if the hydrogenated isomaltulose and water in the syrup mixture may
affect (i.e., increase or decrease) the melting point of the xylitol. The
Examiner assumes that the components of the mixture (i.e., xylitol and
hydrogenated isomaltulose) melt at their pure melting point temperatures.1
It is simply not clear what effect the mixture of the compounds will have on
the melting points of the pure compounds that compose the mixture, and the
Examiner does not address such a matter. The Examiner appears to be
dealing in “possibilities” and “probabilities” in his determination that Reed’s
xylitol in the syrup melts. Robertson, 169 F.3d at 745, 49 USPQ2d at 1950-
51. As such, we find that the Examiner has failed to establish that Reed’s
xylitol in the syrup mixture will melt at “100°F to about 200°F.”
Moreover, Reed does not appear to disclose the temperature range
with “sufficient specificity” to anticipate Appellants’ claims. We agree with
Appellants’ “sufficient specificity” analysis in their Reply Brief (Reply Br.
3-4). We add that the disclosure of a temperature range does not necessarily
constitute a specific disclosure of the endpoints of that range. Atofina v.
1 Reed discloses that the “stabile solid” form of xylitol melts at “93°-
94.5°C,” whereas the “metastable” form of xylitol melts at “61°-61.5°C”.
(Reed, col. 4, ll. 67-68, col. 5, ll. 1). Reed does not specify which xylitol
form he is using in the embodiment cited by the Examiner. This ambiguity
regarding the xylitol form further demonstrates the speculation surrounding
the Examiner’s rejection over Reed. However, regardless of the xylitol form
used, Reed does not indicate that the syrup solution of xylitol, hydrogenated
isomaltulose and water is melted or made molten by heating to a temperature
range of “100°F to about 200°F.”
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