Appeal No. 2005-0295
Application 10/151,586
appellants to provide effective argument or evidence that the “gas stream does not inherently
remove generated ammonia”): In re Skoner, 517 F.2d 947, 950-51, 186 USPQ 80, 82-83 (CCPA
1975) (the description of the claimed invention in terms of certain physical characteristics not
used in the reference, does not patentably distinguish the claimed invention over the reference
where the examiner found that identical means were used in an attempt to achieve identical
results such that the reference can be considered to inherently discloses the claimed invention,
even though the examiner could not compare the process described by appellants and disclosed
in the reference).
On this record, it is apparent from our findings above that, prima facie, the selection
method described by Abdel-Malik with respect to the corn protein zein and that claimed by
appellants for the same protein, as described for that protein in their specification, are based on
the same goal of matching a plasticizer with zein for an optimum blend thereof to form a
plasticized proteinaceous material, wherein the plasticizer is uniformly distributed within zein,
and is accomplished by consideration of the same attractive forces including the dispersion
forces, polar forces, which can be considered ionic forces because polar compounds ionize in
solution, and hydrogen bonding forces of zein and of the plasticizer. Thus, it reasonably appears
that the close relationship between zein protein and a plasticizer based on at least one of these
forces required by the selection method of Abdel-Malik achieves the same result in the same
way as the selection method of appellants for plasticizers for the same protein, even though the
selection may be carried out for different reasons..
Indeed, we found above that the illustration of the selection process for zein and a
plasticizer set forth by Abdel-Malik with respect to Table 1 thereof, in fact employs carbon
compound plasticizers, all of which are thus disclosed to be suitable for zein, and all of which
fall within the EA/C and ED/C requirements specified in appealed method claim 1. Thus, on this
record, Abdel-Malik describes an embodiment of the selection process which, prima facie,
inherently and necessarily is a description of the claimed method encompassed by claim 1 within
the meaning of § 102(b) even though the reference couches the method in different language
than that used in claim 1 by appellants.
With respect to the specific selection of at least one plasticizer for zein that satisfies the
EA/C and ED/C requirements of claim 1 set forth at Tables 5 and 6 of Example 1 of the
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