Appeal No. 2005-0295
Application 10/151,586
disperse forces, polar forces and hydrogen bonding forces of both components, can be stated in
terms of the EA/C and ED/C requirements of the plasticizer as in appealed method claim 1.
However, it is well known to one skilled in this art that electron acceptors and donors affect the
solubility of a carbon compound, and indeed, in this respect, appellants disclose the following:
A plasticizer varies the firmness of gum base by interposing itself between the
macromolecular chains of a target compound. This is best accomplished when the
attractive forces between the compounds of both components are similar. If the
attractive forces are sufficiently dissimilar, immiscibility will result. Attraction forces
between molecules typically include dispersion force, polar forces, hydrogen bonding
forces and ionic forces. It is well known that ionic forces and hydrogen-bonding
typically play important roles in protein dissolution in aqueous solution. In non-
aqueous media, the hydrogen-bonding tends to become the major driving force to
form miscible blends between zein and plasticizers. Plasticizers are required to
possess sufficient electron donors and electron acceptors in their molecular structure
in order to form effective hydrogen bonding with zein macromolecules. In this regard,
due to the amphiphilic nature of zein, the most effective plasticizers for zein are those
that possess a balance of hydrophobic and hydrophilic portions in their molecular
structures similar to zein. [Specification, page 6, l. 30, to page 7, l. 11.]
We note that this disclosure is specific to zein and method claim 1 is not.
The issue raised on this record, as correctly suggested by the examiner and appellants, is
whether, prima facie, Abdel-Malik discloses a method embodiment which can reasonably be
inferred to necessarily and inherently include the selection of a carbon compound plasticizer for
a corn protein on the basis of the EA/C and ED/C of the carbon compound plasticizer, even
though Abdel-Malik is silent in this respect, and thus is a method that is identical to the claimed
method; and if so, whether appellants have provided effective argument or evidence that
patentably distinguishes the claimed method encompassed by claim 1 over such disclosure of
Abdel-Malik. See, e.g., Spada, 911 F.2d at 708-09, 15 USPQ2d at 1657-58 (“it was reasonable
for the PTO to infer that the polymerization by both Smith and Spada of identical monomers,
employing the same or similar polymerization techniques, would produce polymers having the
identical composition,” shifting the burden to appellant to show that the products are not
identical); In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 432-33 (CCPA 1977) (the
examiner reasonably concluded on evidence in the reference that process disclosed therein
necessarily cooled the product which included the finding that the gas stream inherently removed
generated ammonia even though the reference was silent on the matter, shifting the burden to
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