Appeal No. 1999-1229
Application 08/543,975
F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). This the examiner has not
done.
Here, as we understand it, the examiner is arguing that a species claim which is
directed to a solid, orally-administrable composition comprising the two lactases taught by
Rosado and Barillas, and we aren’t sure which claim(s) because the examiner does not
specify regardless of the fact that they each contain different limitations, would have been
obvious in view of the teachings of Kan because one ordinary skill in the art would have
expected a “superior processing effect” by combining the individual lactases derived from
K. lactis and A. niger into a single treatment. Thus, because the examiner believes that the
species claim(s) would have obvious to one of ordinary skill in the art she concludes that the
generic claims also would have been obvious to such persons at the time the application
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was filed.
We find the examiner’s arguments unpersuasive for the following reasons.
First, contrary to the examiner’s contention, we find no teaching or suggestion in the
Kan patent as to a “superior processing effect” being obtained by simultaneously
administering a solid, orally-administrable composition comprising lactases derived from
K. lactis and A. niger, in vivo or in vitro. Nor do we find any teaching or suggestion in the
In making the rejection, we point out that the examiner has apparently only relied on the1
teachings of Rosado, Barillas and Kan to support her position. The examiner mentions Medow only in the
context of how its teachings differ from the claimed invention, but has not applied the teachings of the
reference in an affirmative manner. Thus, we find that although cited in the statement of the rejection, the
examiner has not relied the teachings of Medow, Gekas or Sipos, to support her arguments. Therefore, we
presume that she believes these references to be cumulative and have treated them accordingly.
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