Appeal No. 95-2633
Application 08/121,663
“maintenance of patients with compromised digestive and/or absorptive function” suggests that the
formulations may also be used for parenteral administration. Since the Larson formulations are nutritionally
complete and are useful for enteral and parenteral administration, the formulations implicitly have an
“acceptably low amount of peroxides, free acids and pigments.”
Based on the record before us, a prima facie case of obviousness has been made out with respect
to the subject matter of claims 5, 14 and 15. The burden, thus shifted to applicant to demonstrate that the
olive oil-containing formulations suggested by Larson do not possess the characteristics set out in the
claims. Thorpe, 777 F.2d at 697, 227 USPQ at 966. The PTO does not have the ability to manufacture
products or to obtain and compare prior art products. In re Best, 562 F. 2d 1252, 1255, 195 USPQ 430,
433-34 (CCPA 1977). Applicant has not sustained this burden.
Applicant argues that Larson fails “to describe or suggest . . . that the olive oil used should be free
from harmful lipid peroxides . . . .” (Emphasis added.) Brief, p. 11. Applicant relies on inventor Melin’s
declaration as evidence that refining olive oil at a temperature of about 100°C would produce harmful lipid
peroxides. Melin testifies:
[I]f a neutralized and washed olive oil sample is contacted with the bleaching earth
and the sample is heated in an inert atmosphere at a temperature of about 100°C.
for a period of about 35 minutes and is filtered and analyzed, that thermal oxidation
of that oil sample will occur so that the resulting product will contain undesirable
amounts of peroxide contaminants and possibly other harmful lipid oxidation
products.
Melin Declaration, p. 2, ¶ 4.
The problem with applicant’s argument is that claims 5, 14 and 15 do not require that the olive oil
“be free from harmful lipid peroxides.” The claims only require that the olive oil be “suitable for use as an
enteral or parenteral foodstuff” or have “acceptably low amount of peroxides, free acids and pigments for”
enteral, parenteral and nutritional administration. In our view, Larson suggests olive oil-containing
formulations which meet the claim requirements. The Melin declaration does not demonstrate that the olive
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