Appeal No. 2005-0295
Application 10/151,586
protein, thus providing direction to blends of this protein and each of the plasticizers of this
grouping, prima facie anticipating claim 11 under § 102(b) in view of the authority we cite here.
Furthermore, specific blends of zein and at least one plasticizer that satisfies the EA/C
and ED/C requirements of claim 11 are set forth at col. 8, ll. 38-41, col. 12, ll. 46-51, Tables 5, 6,
9, 10a-c, 11, 12, 23 and 33, and Subexamples A3, B1, B5, B7, B9 and B10 of Abdel-Malik, all
of which species prima facie anticipate the genus encompassed by claim 11, as we have
interpreted this claims above, within the meaning of § 102(b). It is, of course, axiomatic that a
species anticipates a genus.
With respect to the ground of rejection of claim 11 under § 103(a) over the reference,
while the issue here is one of prima facie obviousness, the evidence of a lack of novelty of the
claimed compositions encompassed by claim 11 is, of course, “the ultimate obviousness,” and
accordingly, to the extent that Abdel-Malik anticipates the claimed compositions encompassed
by claim 11, the case of obviousness is irrebuttable. See In re Baxter Travenol Labs., 952 F.2d
388, 392, 21 USPQ2d 1281, 1284-85 (Fed Cir. 1991) (citing In re Fracalossi, 681 F.2d 792, 794,
215 USPQ 569, 571 (CCPA 1982)).
Turning now to the ground of rejection of method claim 1 under § 102(b), we found
above that Abdel-Malik would have disclosed that the selection of a plasticizer that can be
uniformly distributed within a protein, that is, the protein will dissolve in the plasticizer or be
plasticized, to prepare a gum base, can be accomplished if either the total solubility parameter or
one or more of the dispersive forces, polar forces and hydrogen bonding forces for the protein
and the plasticizer are within 15% of each other (e.g., col. 4, ll. 14-41, col. 6, l. 61, to col. 7, l.
16, and col. 7, ll. 17-67). Abdel-Malik illustrates this selection method with the corn protein
zein and the carbon compounds in Abdel-Malik Table 1 (col. 8, ll. 9-45). We further found
above that the compositions or blends of zein and the carbon compound plasticizers thus
disclosed in Abdel-Malik Table 1 satisfy the requirements for corn protein and plasticizer set
forth in composition claim 11, which describes such compositions in the same language. It is
clear that Abdel-Malik teaches that blends of zein and a plasticizer to form a gum base are
formed by mixing.
As appellants correctly point out, there is no disclosure in Abdel-Malik that the selection
of a plasticizer for a protein based on either the total solubility parameter or one or more of the
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