Appeal 2006-1223
Application 10/214,009
The Examiner acknowledges that neither Wagstaff nor Portman
“expressly [teaches] the particular combination of ethyl oleate and calcium
propionate” (Answer 3). Nevertheless, relying on the rationale expressed
in In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA
1980), the Examiner concludes that “it would have been prima facie obvious
to a person of ordinary skill in the art . . . to make a composition comprising
both calcium propionate and ethyl oleate because it is prima facie obvious to
combine two compositions each of which is taught in the prior art to be
useful for [the] same purpose in order to form [a] third composition that is to
be used for [the] very same purpose” (Answer 3-4).
Further, relying on the rationale set forth in In re Boesch, 617 F.2d
272, 204 USPQ 215 (CCPA 1980), the Examiner notes that “the cited
references teach broad ranges . . . 0.1-5 grams for short chain fatty acid,
and 1-4 grams . . . for long chain fatty acid” (Answer 6), and argues that
“optimization of a result effective parameter . . . within a known range is
considered within the skill of the artisan” (Answer 6). Thus, the Examiner
concludes that it would have been obvious for one skilled in the art to
provide a composition with long and short chain fatty acids in a ratio of
about 10:1 or less.
We note Appellants’ argument that each of the prior art references
“fails to teach or suggest” combining the two types of fatty acids that each
discloses individually, thus, “[t]here is no suggestion or motivation present
that would lead one of skill in the art to modify” either reference (Br. 3-4).
“[T]he present invention, therefore, cannot be rendered [ ] obvious over the
teachings of Wagstaff and Portman” (Br. 5). Nevertheless, the lack of an
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