Appeal No. 1996-2766
Application No. 08/258,909
Accordingly, the above quoted disclosure from Fu teaches
that the compositions of this reference contain a protein-
removing effective amount of surfactant. The claims on appeal
require that “a protein-dissolving effective amount of
surfactant is absent” from the claimed composition (see claim
15 on appeal). The examiner, not the appellants, bears the3
initial burden of presenting a prima facie case of
obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). The examiner has not shown or
established, by evidence or convincing reasoning, why one of
ordinary skill in the art would have excluded the effective
protein-removing amount of surfactant used in the compositions
of Fu.
The examiner notes that the claims are drafted with the
term “comprising” which opens the claim to additional
adjuvants (Answer, page 5). This claim interpretation is not
well taken since the plain meaning of the claims cannot be
altered by the common interpretation of “comprising”, i.e.,
3On this record, there is no allegation or evidence that
the effective protein-removing by the surfactant of Fu differs
from the “protein-dissolving” by the surfactant as recited in
the claims on appeal.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007