Appeal No. 2003-2147
Application No. 09/392,243
In the present case, the examiner has failed to provide sufficient evidence that
one of ordinary skill in the art would readily substitute one preservative for another, in
view of evidence present in the record that preservatives of the prior art in fact function
differently than the claimed preservative. Moreover, the evidence of record reasonably
appears to reasonably show that specific preservatives are for required for specific
applications and thus one of ordinary skill in the art would not readily substitute one
preservative for another. We particularly note appellants' Exhibit D, Tables 11-1 and
11-3, provides evidence that preservatives have distinct applications. From the
examiner's perspective Table 11-1 of Exhibit D provides that certain preservative have
multiple applications (Answer, page 7), but th examiner does not acknowledge the
reference's teaching that other preservatives do not have general application or provide
evidence that the specific claimed preservatives are known in the art to have general
application, or particular application to the preservation of mucosa tissue.
In view of the above, we reverse the rejection of the claims over Van Gorp in
view of Balslev and Oles.
Other Issue
Upon return of the application to the examiner, it is recommended that the
examiner carefully review the disclosure of Hiles, U.S. Patent No. 6,666,892 (attached)
and determine its relevance under 35 U.S.C. § 102(e) or 103(c), if any, to the claimed
subject matter. In particular, Hiles would appear to have a filing date, May 27, 1999,
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