Appeal No. 95-4890
Application 08/035,002
protein. Under these circumstances, it is reasonable to shift
the burden of persuasion to applicants to establish that the
oil-in-water emulsion of claim 12 patentably distinguishes
from the oil-in-water emulsion disclosed by Nichols in Example
V. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34
(CCPA 1977).
Applicants argue that the claim 12 oil-in-water emulsion
is intended for use as an ointment for treating burns or
wounds, whereas the oil-in-water emulsion disclosed by Nichols
in Example V is described as a “laxative product”. First, the
terms “an ointment for the treatment of burns or wounds”
merely set forth the intended use for, or a property inherent
in, applicants’ composition. Those terms do not differentiate
the claimed composition from those known to the prior art,
i.e., oil-in-water emulsions containing the same percentages
by weight of oil, insoluble protein, and water. In re
Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974).
Second, assuming arguendo that the percent by weight of
collagen solids in the Example V emulsion of Nichols does not
meet the terms of claim 12, nevertheless, it would have been
obvious to vary that amount per the teachings in Nichols,
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