Appeal No. 1997-2364
Application 08/137,086
inability to manufacture products or to obtain and compare prior art products
[footnote omitted].
The examiner believes that shifting the burden of proof to appellant is appropriate in
this instance because Brule “generally teaches the limitations that are reproduced in the
invention summary,” and “[t]he only difference, if there is one, between the reference and
the instant application is that . . . the concentration of the salt solution used for the
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diafiltration step” is not disclosed in the reference. As Brule’s “final phosphopeptides are
recovered as aggregates,” the examiner maintains that “it would have been obvious . . . to
use a concentration of a salt solution that would keep the aggregates intact,” thus, “the
isolation of the anti-cariogenic phosphopeptides would be inherent in the process.”
We disagree with the examiner’s analysis and conclusion. In our judgment, the
facts of this case, as developed on this record, do not justify shifting the burden of proof to
appellant.
Claims 1 and 10, which represent the invention in its broadest aspect, are directed
to preparing and isolating selected phosphopeptides from casein, and to the isolated
phosphopeptides, respectively. The method involves digesting a monovalent cation salt of
casein in solution; aggregating at least the selected phosphopeptides in the solution with a
2We note the emphasis on “the invention summary” and “the instant application” in
the statement of the rejection, and remind the examiner that “[a]nalysis begins with a key
legal question -- what is the invention claimed?” since “[c]laim interpretation . . . will
normally control the remainder of the decisional process,” Panduit Corp. v. Dennison Mfg.
Co., 810 F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S.
1052 (1987). .
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