Ex parte JOHNSON - Page 10

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

              the sugar and mint leaves from the Tarr reference.  As the appellant correctly notes, the                      
              Tarr process has no intermediate step in which only tomato juice and orange juice are                          
              present without the sugar or mint leaves.  Sugar and mint also are strong flavorings, and no                   
              suggestion is seen in Tarr for removing those flavorings.  To the contrary, Tarr designated                    
              her drink as “Minted Tomorange-Ade” (emphasis added).  None of the other prior art of                          

              record, either alone or in combination, suggests a beverage consisting essentially of                          
              tomato and orange juices from concentrates.  Only through impermissible hindsight,                             
              therefore, would one skilled in the art have chosen the tomato and orange juices taught by                     
              Tarr, while at the same time excluding the sugar and mint leaves also taught by that                           
              reference, to arrive at the invention consisting essentially of the components presently                       
                              NEW GROUND OF REJECTION UNDER 37 CFR 1.196(B)                                                  
                      Pursuant to the provisions of 37 CFR 1.196(b), we make the following new grounds                       
              of rejection.                                                                                                  
                      Claims 2, 4, 5, 7, and 8 are rejected under 35 USC 112, second paragraph, as                           
              being indefinite.                                                                                              

                      Claims 2 and 5 are unclear as to whether the percentages of sodium benzoate and                        


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