Appeal no. 1997-3953
Application 08/392,615
claimed composition that would distinguish it from the prior art composition (which is
clearly capable of supporting the growth of malolactic bacteria). In re Pearson, 494 F.2d
1399, 1403, 181 USPQ 641, 644 (CCPA 1974). Similarly, the examiner’s rationale for
modifying Henick-Kling’s medium relies on one of ordinary skill in the art having some
reason to convert the prior art medium to a “starter medium,” but no reason is given.
Moreover, there is uncontroverted evidence of record that the ratio of fructose to glucose
does not increase during the ripening of grapes. See the declaration of Dr. Henick-Kling,
submitted December 14, 1995.
In our view, the only difference between Henick-Kling’s MRSM and the claimed
medium is the ratio of glucose to fructose, and/or the overall concentration of glucose plus
fructose; and the dispositive issue is simply whether there is any reason, stemming from
the prior art, to modify the carbohydrate content of Henick-Kling’s MRSM in the manner
required by the present claims.
Turning to the Examiner’s Answer (pages 4 and 5), under the heading “Response to
Argument,” we find the following statement from the examiner:
It has been clearly established in the prosecution of this case that the prior
art discloses that the various proportions and amounts of the ingredients
used in the claimed composition, i.e. fructose/glucose and malic acid, are
result effective variables which be [sic] routinely optimized by one of ordinary
skill in the art in practicing the invention disclosed by that reference . . . [i]t is
well within the purview of the skilled artisan to vary fermentation conditions
via routine experimentation in order to optimize microbial growth or
production.
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