Appeal No. 2001-1725
Application 09/009,536
B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d
1314, 1318 (Fed. Cir. 1996).
In the present instance, the Examiner has cited Matsuura as a primary reference,
and Yang as a secondary reference. The motivation for combining Yang with Matsuura
is Yang’s suggestion for use of the bacteria strains “in a variety of fermentation
processes, including with soy milk (Examiner’s Answer, page 3, lines 23-24). The
Appellants take issue with this combination, asserting that “it is important to note that
there contain no teachings and suggestions in Matsuura et al., Yang et al. or
Katsunobu, which would have led one skilled in the art to expect that the claimed
method of the present invention would produce a fermented soybean milk of such
superior flavor” (Appeal Brief, page 8, lines 11-14). The Appellants further argue that,
as Matsuura is directed to the production of a cheese-like product, it is completely
different from the claimed fermented soybean milk with superior flavor (Appeal brief,
page 11, lines 12-16).
We look to the prior art as a whole (for purposes of claim 1, Matsuura and Yang)
to determine if there is something to suggest the desirability of making the combination.
Matsuura teaches the production of a soybean milk (see, e.g. column 4, lines 31 et
seq.).1 Further, Yang teaches the addition of Bifidobacterium longum to single or mixed
strains of bacteria (such as Lactobacillus acidophilus, Lactococcus lactis, Lactobacillus
casei, Streptococcus thermophilus, Lactobacillus bulgaricus) or yeast or other suitable
inoculi for the production of soy milk (Column 6, lines 20-28). From line 49 to 64 of
1 While Matsuura does indeed go on further to make a cheese-like product out of the milk, a soy milk
product is first prepared.
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