Appeal No. 2001-1725
Application 09/009,536
column 6 of Yang, an exposition on the effectiveness of the Bifidobacterium longum
strains in passing through gastric acid with increased survivability is found.
The Appellants have not addressed these reasons for combining the references.
The Appellants’ response is limited to the argument that at best one of ordinary skill in
the art would only have expected differences in flavor based upon the teachings and
suggestions of the prior art (Appeal Brief, lines 6-10).
The motivation relied upon by the Examiner to make the prior art combination
does not need to be the same as the problem being addressed by the Appellants. See
In re Beattie, 974 F.2d 1309, 24 USPQ2d 1040 (Fed. Cir. 1992) (As long as some
motivation or suggestion to combine the references is provided by the prior art taken as
a whole, the law does not require that the references be combined for the reasons
contemplated by the inventor).
Turning to the argument that the combination of references fails to disclose the
invention as claimed, the Appellants focus on the term “dehypocotyl” and state that
Matsuura’s process:
fail[s] to teach or suggest a step for contacting a dehulled and a “dehypocotyl”
whole soybean in warm water. In other words, Matsuura et al. only requires the
use of dehulled soybeans in producing the soybean milk. Nowhere in the
Matsuura et al. reference, including the Examples, does Matsuura et al. teach the
use of dehypocotyl whole soybeans. Thus, Matsuura et al. fails to teach or
suggest an important claimed element in a claimed process step of the present
invention. (Emphasis in original) (Appeal Brief, page 12, line 16-page 13, line 3)
The Examiner asserts that the Appellants’ own specification belies this statement
by stating that any conventional soybean milk can be used (Examiner’s Answer, page 7,
lines 16-23) and that the examples and comparative examples of the invention in the
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