Appeal No. 1996-3802
Application 08/296,790
4; see Balser, col. 6, lines 65-68). Based on these teachings of the reference, the examiner finds that
“the goal and direction of Balser is to provide a white sausage casing . . . that is opaque” and the
reference teaches “substituting the normally used titanium dioxide white pigment . . . with other pigments
and dyes to achieve a desired effect” which “is what applicant has done [sic]” (id., page 5). Thus, the
examiner apparently concludes, without stating in so many words, that one of ordinary skill in this art
would have selected a violet pigment and added the same in certain amounts, while adjusting the amount
of the titanium dioxide pigment, to the white casings of Balser to achieve any desired result.
Appellants submit that the claimed food casing has “increased opacity while requiring less
titanium dioxide to do so” and still be “white,” and that Balser neither suggests “adding a [small amount
of] violet pigment” nor “the unobvious increase in opacity if such addition was made” (principal brief,
page 4). In other words, it is appellants’ position that the “present invention does not concern ‘mix and
match’ colors . . . [but] only ‘white’ having increased or at least constant opacity with a reduction in
TiO2 opacifier” (id.). The examiner responds to appellants’ arguments by finding that “adding a violet
pigment would necessarily indicate that one would not need as much TiO2 [sic] pigment to keep the
casing either opaque or white “ and that “such information may be gleaned by . . . the routine
practitioner without undue experimentation” (answer, pages 5-6). Appellants reply that there is no basis
for the examiner’s “conclusion that adding violet pigment would keep the casing white” (reply brief,
page 2).
On this record, we must agree with appellants’ position. We do agree with the examiner that
Balser would have taught one of ordinary skill in this art to use known pigments that “are compatible
with the liquid, aqueous alkaline reacting impregnating agent” to impart “dark shades in order to increase
contrast with the metallic pearlescent flake pigment” to casings, that can have utility as, inter alia, food
casings (e.g., col. 4, lines 31-39, col. 6, lines 48-59, and Examples 17, 19, 20 and 21). However, we
find that the examiner has not provided in the record a scientific explanation or evidence which would
demonstrate why one of ordinary skill in this art would have reasonably been led by these teaching to
use “a water insoluble violet pigment” suitable for use in a “white food casing” in the casings of Balser in
the amount specified in claim 9 and to adjust the amount of titanium dioxide pigment as specified in claim
9, which is less than the amount stated in Balser, with the reasonable expectation of obtaining the
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