Ex parte JOHNSON - Page 6

              Appeal No. 1997-2565                                                                                           
              Application 08/382,588                                                                                         

              a per se rule.  Second, the Tarr reference does not teach or suggest the presently claimed                     

              invention because the reference also teaches the addition of two cups of boiled mint leaves and                
               cup of sugar.  The examiner responds to the first argument at p. 7 of (parenthetical added):                 
                      Appellant argues that the Examiner is applying a rule in using In re Levin, but                        
                      does not say just how (his) situation is different than that cited in In re Levin.                     
                      It is not seen that a “rule” has been applied, but a court decision, that has not                      
                      been overturned.                                                                                       
              The examiner responds to the second argument at the pg. 6 (parenthetical added):                               
                      Appellant argues that the cited reference to “Minted Tomorange-ade” does                               
                      not show [his] exact recipe.  However, it does show the basic concept of                               
                      combining in equal amounts, tomato juice and orange juice.  The additional                             
                      ingredients only add flavor, i.e., mint, and lime, and most likely the mixture                         
                      will be much thinner than that claimed, otherwise the claims and the cited                             
                      recipe are seen to be very similar and the use of less water would only give                           
                      the expected result of a more concentrated thicker product.                                            
                      We reverse the examiner on both grounds.  The decision of In re Levin, 178 F.2d                        
              945, 948, 84 USPQ 232, 234 (CCPA 1949), provides no basis for the application of a per                         
              se rule.  In our view, Tarr, either alone or in combination with other prior art, does not teach               
              or suggest a beverage consisting essentially of the claimed components.                                        

                      In effect, the examiner has labeled the claimed invention as a recipe and then                         
              extracted a per se rule from Levin that recipes are not patentable.  The court made it clear                   


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