Appeal No. 1998-2941 Page 33
Application No. 08/061,985
Reexamination Control No. 90/003,682
life of four to 36 weeks. The specification does not
enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to
use the invention commensurate in scope with these
claims. In particular, the disclosure is not enabling
for product claims which do not recite that said products
are aseptically packaged, since the entire disclosure
pertains to an aseptically packaged liquid whole egg
product having a shelf life of from about four to thirty-
six weeks under refrigerated conditions. There is not
enough information in the specification to enable one
skilled in the art (without undue experimentation) to
have provided a liquid whole egg product with such a
shelf life in the absence of aseptic packaging. Although
it is noted that the specification refers to aseptic
packaging as being “preferable” and that said eggs
“should be aseptically packaged” as cited from the
instant specification by Applicants, these words do not
suggest that said extended shelf life may also be
achieved without aseptic packaging. Clearly, one may
derive from such wording that a liquid egg may be
ultrapasteurized without aseptic packaging, but not
necessarily to achieve the extended shelf life claimed
which is a primary advantage of the instant invention.
Whenever aseptic packaging is mentioned in the instant
specification, it is mentioned in conjunction with an
extended shelf life. The original specification simply
does not teach or suggest that the extended shelf life
(e.g. claim 20) is enabled in the absence of aseptic
packaging.
We agree with the appellants' argument (brief, pp. 169-
171) that the 35 U.S.C. § 112, first paragraph, rejection is
improper. In that regard, analysis of whether the claims 20-
27 and 46/20 are supported by an enabling disclosure requires
Page: Previous 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 Next
Last modified: November 3, 2007