Appeal No. 2005-0295
Application 10/151,586
form a miscible mixture with an amphiphilic corn protein, which is illustrated in specification
Example 1 (brief, page 12). In this respect, appellants contend that Abdel-Malik discloses “a
laundry list of ‘organic plasticizers’ that are mixed with a protein by melting the protein and
plasticizer into one another under high shear conditions,” and thus “fails to explicitly disclose”
the claimed invention encompassed by the appealed claims (id., page 13). Appellants recognize
that EA/C and ED/C are inherent to carbon compounds containing such functional groups, and
contend that the issue is not whether plasticizers disclosed by Abdel-Malik can have the same
ratios as plasticizers encompassed by the claimed invention, but “whether selecting a plasticizer
to be mixed with a corn protein based on its EA/C and ED/C ratios is inherent in” Abdel-Malik,
and submit that there is no direction to the claimed invention in the “laundry list of plasticizers
disclosed in” the reference (id.). Appellants further argue that Abdel-Malik “teaches away from
the claimed invention” by disclosing in col. 12, a range of plasticizers that are outside of the
claimed invention, pointing to, e.g., a comparison of propylene glycol, within the claims, and
unclaimed polypropylene glycol (id., pages 13-15). Appellants further submit that “routine
experimentation” to optimization does not apply because Abdel-Malik does not recognize EA/C
and ED/C as a result effective variable (id., pages 15-16).
Appellants finally contend that the certain of the plasticizers in specification Table 1 that
are shown to fall within the EA/C and ED/C ranges specified in the claims form “a clear, one
phase mixture” at the “zein/plasticizer mixture (1:10)” (see specification Example 1, Table 1 and
Examples 3-7 and 9), while certain other plasticizers set forth in other Examples falling within
the claims which do not achieve such a result “can still be effective plasticizers of zein in the
presence of an additional plasticizing component” as set forth in specification Examples 10 and
11 (id., page 16).
We note here that appealed claims 1 and 11 are not limited to preferred EA/C range of
0.1 to 0.67 and preferred ED/C range of 0.3 to 1.0 or the zein/plasticizer mixture in specification
Table 1. Indeed, not only are these claims not limited to zein as the corn protein, but methanol
and ethanol are plasticizers which fall within claims 1 and 11 according to specification Table 1
and are disclosed therein to achieve “cloudy, two phase” mixtures. Other plasticizers falling
with claims 1 and 11 also produce less than preferable results as shown in specification Table 2,
the data involving a different zein/plasticizer mixture than reported in specification Table 1. We
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007