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
½ 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.
Opinion
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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