Appeal No. 95-2444
Application 07/973,655
that "[t]he subject matter relating to the use of soybean
peroxidase in enzymatic bleaching of kraft pulp at column 10,
lines 44-45 of U.S. Patent No. 5,147,793" is not claimed therein
(Declaration, ¶2). Claim 1 of the '793 patent recites a method
for biocatalytic oxidation of an oxidizable substrate comprising
(1) preparing a solution of the oxidizable substrate and (2)
contacting the solution with soybean hulls in the presence of a
peroxide. First, the treated lignocellulosic pulp in appellants'
claim 1 is not in solution. Second, soybean hulls are not the
same as soybean peroxidase, required in appellants' claim 1.
Rather, soybean hulls are one of several elements used to produce
soybean peroxidase ('793 patent, col. 12, line 46 through col.
13, line 3; appellants' specification, p.3, lines 22-24).
Therefore, the same invention is not claimed in appellants’
application and the ‘793 patent.
The declaration under 37 CFR § 1.132 is sufficient and
removes the '793 patent as available prior art under 35 U.S.C.
§ 102(a) and (e). See MPEP § 716.10 (6th ed. Rev. 2, July 1996)
("When subject matter, disclosed but not claimed in a patent
application issued jointly to S and another, is claimed in a
later application filed by S, the joint patent is a valid
reference available as prior art under 35 U.S.C. 102(a), (e), or
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