Ex Parte Stephenson - Page 4

               Appeal No. 2007-4245                                                                        
               Application 09/489,310                                                                      
                      The disclosed polyphosphates may be added to fruit juices such as                    
               apple juice.  Kohl 2:50-57.                                                                 
                      There is no dispute that the fruit juices disclosed in Kohl, containing              
               the polyphosphates of the invention, are beverage compositions within the                   
               scope of claim 23.                                                                          
                      D. PRINCIPLES OF LAW                                                                 
                      “A claim is anticipated only if each and every element as set forth in               
               the claim is found, either expressly or inherently described, in a single prior             
               art reference.”  Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631,                 
               2 USPQ2d 1051, 1053 (Fed. Cir. 1987).                                                       
                      To establish inherency, the extrinsic evidence “must make clear that                 
               the missing descriptive matter is necessarily present in the thing described in             
               the reference, and that it would be so recognized by persons of ordinary                    
               skill.”  Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20                       
               USPQ2d 1746, 1749 (Fed. Cir. 1991).                                                         
                      Where the claimed and prior art products are identical or substantially              
               identical, the PTO can require an applicant to prove that the prior art                     
               products do not necessarily or inherently possess the characteristics of the                
               claimed product.  In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433                        
               (CCPA 1977).                                                                                
                      One of ordinary skill in the art is presumed to have skills apart from               
               what the prior art references expressly disclose.  See In re Sovish, 769 F.2d               
               738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).  A person of ordinary skill is                
               a person of ordinary creativity, not an automaton.  KSR Int’l v. Teleflex Inc.,             
               127 S. Ct. 1727, 1742, 82 USPQ2d 1385, 1397.                                                
                      E.    ANALYSIS                                                                       
                      Claim 23 originally read (Amendment dated July 3, 2002 at 1):                        

                                                    4                                                      

Page:  Previous  1  2  3  4  5  6  7  8  Next

Last modified: September 9, 2013