Appeal No. 2005-0295
Application 10/151,586
reference, either expressly or under the principles of inherency, in a manner sufficient to have
placed a person of ordinary skill in the art in possession thereof. See generally, Spada, 911 F.2d
at 707, 15 USPQ2d at 1657. With respect to § 103(a), the examiner has the burden of
establishing a prima facie case of obviousness by showing that some objective teaching,
suggestion or motivation in the applied prior art taken as a whole and/or knowledge generally
available to one of ordinary skill in this art would have led that person to the claimed invention
as a whole, including each and every limitation of the claims arranged as required by the claim,
without recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet, 149
F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great
Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991) (citing In re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir. 1988)); In re Fine, 837 F.2d
1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988).
We first consider the claimed compositions encompassed by product claim 11. We have
interpreted this claim above to encompass a gum base composition comprising at least a corn
protein and a plasticizer that satisfies the EA/C and ED/C requirements. We discussed above the
disclosure in Abdel-Malik of a number of compositions which are a blend of the corn protein
zein and one or more plasticizers. Indeed, based on information in specification Table 1 as well
as on our own calculations, all of the carbon compound plasticizers in Abdel-Malik Table 1 meet
the EA/C and ED/C requirements, and there is clear direction in the text accompanying this table
to blend such plasticizers with zein based on either the total solubility parameter or one or more
of the disperse forces, polar forces and hydrogen bonding forces parameters set forth in the table
as clearly taught in the reference (col. 6, l. 61, to col. 7, l. 67, and col. 8, ll. 9-45). Thus, prima
facie, there is clear direction in Abdel-Malik Table 1 to compositions which are a blend of zein
and a plasticizer that anticipate claim 11 within the meaning of § 102(b). See In re
Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982); In re Schaumann, 572 F.2d
312, 316-17, 197 USPQ 5, 9-10 (CCPA 1978); In re Arkley, 455 F.2d 586, 587, 172 USPQ 524,
526 (CCPA 1972); In re Petering, 301 F.2d 676, 681-82, 133 USPQ 275, 279-80 (CCPA 1962).
A similar grouping of plasticizers all of which satisfy the EA/C and ED/C requirements is set
forth at col. 12, ll. 37-45, and it is clear from Abdel-Malik that corn protein zein is a preferred
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