Appeal 2007-1610
Application 10/955,833
In our opinion, Appellants have the better argument. Claim terms are
given their broadest reasonable interpretation as they would be understood
by persons of ordinary skill in the art when read in the context of the
Specification. We have interpreted “ingestible” to mean a material that can
be present in a food (see supra at p. 4) because the Specification describes
the invention as purified ethyl 3-mercaptobutyrate as a flavoring to be used
in foodstuffs (Spec. 5: 33-38). The Examiner’s interpretation of “ingestible
vehicle” is broad, but not reasonable in light of the Specification’s teaching
about the use of ethyl 3-mercaptobutyrate in food.
Appellants have introduced evidence, unrebutted by the Examiner,
that hexane is a toxic substance and therefore would not be considered an
“ingestible vehicle” as required by claim 7. We find this evidence
persuasive, and thus concur with Appellants that the Examiner erred in
rejecting claims 7-9 as anticipated by Nielsen. We reverse this rejection.
Anticipation by Lazier
Claim 7 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Lazier.
Lazier teaches the synthesis of ethyl 3-mercaptobutyrate having 87%
purity (Lazier, at col. 3, ll. 35-37; Answer 12). The Examiner contends that
this composition meets the limitation of claim 7 requiring the presence of an
ingestible vehicle “because there is some additional material contained
besides the mercapto-ester compound (the ‘ingestible vehicle’)” (Answer
12).
Appellants contend that “[t]he Examiner may NOT assume that this
additional material (13%) is an ingestible material. Lazier et al. does not
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