Appeal No. 95-4321
Application 07/976,241
is not established by the examiner. More relevant to the claimed subject matter is Barker
which discloses an enzymatic isomerization of galatose to tagatose as well as the
associated reactions conditions for this type of process. As pointed out by the examiner,
Barker teaches (Answer, page 6) "[a] process for the production of tagatose via the
conversion of galactose in the presence of L-arabinose isomerase." While Barley does
not disclose the optimum reaction parameters and conditions for conversion of D-
galactose to D-tagatose, it does disclose the optimum isomerization conditions for
converting glucose to fructose as well as indicating the broader preferred conditions for
such processes. (Col. 6, lines 15-26). These conditions, including a pH range of 6-10, a
temperature range of 50-100 C and a concentration of starting material of 30% to 50%
w/w, reasonably appear to overlap the reaction conditions of claim 11. At the very least,
Barker establishes that the reaction conditions relating to pH, temperature and
concentration of starting materials are result effective variables. This is sufficient to
establish a prima facie case of obviousness as it relates to the claimed method. This
accords with the rule that discovery of optimum values of result effective variables in a
known process is ordinarily within the skill of the art. In re Boesch, 617 F.2d 272, 276, 223
USPQ 785, 788 (CCPA 1980) and cases cited therein.
Thus, we find that the examiner has established a prima facie case of
unpatentability as to the claimed method of enzymatically isomerizing D-galactose to D-
tagatose in the presence of arabinose isomerase. Where, as here, a prima facie case of
obviousness has been established, the burden of going forward shifts to the appellants. In
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