Appeal 2007- 2552
Application 10/276,428
8. The alkyl glycosides of Amalric are derived from alcohols
(Amalric, col. 3, ll. 7-17).
9. Amalric describes using the emulsion to formulate syndets or
dermatological cleansing bars (col. 5, ll. 13-15) and other
personal care products such as shampoo, make-up removing
milk, and body milk (Examples 8-10).
C. Principles of Law
When a claimed product appears to be identical or substantially
identical to a product disclosed by the prior art, the burden is on the
Applicants to prove that the product of the prior art does not necessarily or
inherently possess characteristics or properties attributed to the claimed
product. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
D. Analysis
As an initial matter, we agree with Appellants that “one-phase
microemulsion” as recited in the preamble of the claims limits the structural
arrangement of composition claimed. Because it further limits the structure
of what is claimed, this limitation is essential to point out the invention
defined by the claims: In other words, it breathes life and meaning into the
claim in a way that further limits it. See Kropa v. Robie, 187 F.2d 150, 152,
88 USPQ 478, 480-81 (CCPA 1951) (A preamble reciting "An abrasive
article" was deemed essential to point out the invention defined by claims to
an article comprising abrasive grains because “abrasive” further limited the
structure of the article).
Even so, we determine that the Examiner’s rejection of the claims as
either anticipated or obvious is supported by a preponderance of the
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