Appeal No. 2005-0295
Application 10/151,586
reference, these two species prima facie anticipate the genus encompassed by claim 1 within the
meaning of § 102(b).
With respect to the ground of rejection of claim 1 under § 103(a) over Abdel-Malik, the
evidence of a lack of novelty of the claimed methods encompassed by claim 1 in the reference is
“the ultimate obviousness,” and thus, to the extent that Abdel-Malik anticipates the claimed
methods encompassed by claim 1, the case of obviousness is irrebuttable. See Baxter Travenol
Labs., 952 F.2d at 392, 21 USPQ2d at 1284-85 (citing Fracalossi, 681 F.2d at 794, 215 USPQ at
571).
Therefore, the burden shifts to appellants to submit effective argument or objective
evidence to patentably distinguish the claimed method encompassed by claim 1 from this
embodiment of Abdel-Malik. Spada, 911 F.2d at 708-09, 15 USPQ2d at 1657-58; Best,
562 F.2d at 1254-55, 195 USPQ at 432-33; Skoner, 517 F.2d at 950-51, 186 USPQ at 82-83.
Accordingly, since a prima facie case of anticipation and a prima facie case of
obviousness has been established over Abdel-Malik with respect to method claim 1 and product
claim 11, we have again evaluated all of the evidence of anticipation and non-anticipation and all
of the evidence of obviousness and nonobviousness based on the record as a whole, giving due
consideration to the weight of appellants’ arguments in the brief and reply brief. See generally,
Spada, 911 F.2d at 707 n.3, 15 USPQ2d at 1657 n.3; In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
Contrary to appellants’ contentions with respect to the breadth of the disclosure, that is,
“laundry lists,” of Abdel-Malik, we find in the reference substantial evidence specific to blends
of zein and particular proteins falling with the plasticizer requirements of claims 1 and 11, thus
providing a description of embodiments supporting the grounds of rejection of claims 1 and 11.
Indeed, as we found above, the generic listing of “organic plasticizers” in col. 12 of Abdel-Malik
is not specific to any protein, and thus, the fact that this listing is not limited to the plasticizers
specifically disclosed for zein by Abdel-Malik does not benefit appellants with respect to either
ground of rejection. We with respect to a ground of rejection under § 102(b) that “the question
whether a reference ‘teaches away’ from the invention is inapplicable to an anticipation
analysis.” Celeritas Technologies Ltd. V. Rockwell International Corp., 150 F.3d 1354, 1361,
47 USPQ2d 1516, 1522 (Fed. Cir. 1998).
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