Appeal No. 2003-1721 Page 5
Application No. 09/226,143
must provide enough evidence or scientific reasoning to establish that the belief that the property
is inherent is a reasonable belief. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int.
1990); Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1986).
We cannot agree that the Examiner has provided the level of reasoning or evidence here
necessary to establish that aggregates are necessarily present in either of the carotenoid
compositions of the primary references.
First, both rejections rely upon the following Statements in the Specification:
The aggregation of carotenoids is a well-known phenomenon
which has been numerously described in the literature [listing of
references omitted].
Carotenoid aggregates can be produced, for example, by mixing a
solution of a carotenoid in a water-miscible organic solvent such
as, for example, isopropanol, ethanol, acetone or tetrahydrofuran
with water.
(specification, p. 1, ll. 25-36). Appellants indicate that it is the combination of solvent and water
that must be present to form aggregates (Brief, p. 5, ll. 15-16). Appellants also indicate that the
order of mixing is important: The water must be added to the carotenoid-solvent solution in
order to form aggregates (Supplemental Brief, p. 4, l. 18 to p. 5, l. 4).2 That is a fair reading of
2Appellants rely upon arguments in both the Brief and Supplemental Brief to support their position
(Supplemental Brief, p. 3), therefore, we consider the arguments in both documents.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007